Court Affirms Cancellation of Redskins' Trademark Registrations

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By Anandashankar Mazumdar

July 8 — The Patent and Trademark Office was correct in ordering cancellation of six registrations relating to trademarks of the Washington Redskins football team, the U.S. District Court for the Eastern District of Virginia ruled July 8.

The court found that the evidence supported the conclusion that at the time the registrations were applied for—from 1967 to 1990—the trademarks “consisted of matter that ‘may disparage' a substantial composite of Native Americans,” and that they should be cancelled under a statutory provision barring registration of disparaging trademarks.

The Redskins announced their intent to appeal on the day that the decision was released.

The court emphasized that its cancellation order does not prevent the Redskins from continuing to use their trademarks, nor does it prevent “sports fans from collecting, wearing, or displaying the Redskins Marks.”

Additionally, the court said that the law that bars registration of disparaging terms on the federal trademark register does not violate the Redskins' First Amendment rights and other constitutional protections.

Certainty Regarding PTO's Ability to Reject 

One trademark practitioner told Bloomberg BNA that the court's decision offered some certainty regarding how the PTO is allowed to administer its registration authority.

“This ruling provides more certainty with respect to not just the U.S. Patent and Trademark Office's ability to reject a trademark application under section 2(a) of the Lanham Act which prohibits registration of disparaging marks, but possibly other Lanham Act prohibitions to registration as well,” Monica Riva Talley of Sterne, Kessler, Goldstein & Fox PLLC, Washington, said in an e-mail message.

A trademark holder is not required to register its trademark at either the state or federal level, but federal registration confers some advantages when suing in federal court.

A federal registration eases some burdens of proof regarding the existence and geographical scope of a plaintiff's trademark rights and can act as constructive notice to others who wish to use a similar trademark.

Registration also can make it easier to have Customs and Border Protection stop knockoffs from being imported without having to first find and sue the infringer.

‘Redskins' Name Used Since 1930s 

The Boston Braves football club joined the National Football League in 1932, taking its name from the Boston Braves baseball team. A year later, it changed its name to the Boston Redskins and it kept the “Redskins” name when it moved to Washington in 1937.

Although the team had used the name for decades, it did not begin registering its “Redskins” trademarks until 1967. From then until 1990, the team's corporate owner, Pro-Football Inc., registered six trademarks with the Patent and Trademark Office incorporating the term “Redskins” or “Redskinettes.”

Original Petition Killed by Laches 

The name engendered controversy going back at least to 1971, and in the early 1990s, a group of Native Americans petitioned the PTO to cancel the registrations based on Section 2(a) of the Lanham Trademark Act of 1946, 15 U.S.C. §1052(a), which bars registration as trademarks of disparaging or scandalous terms.

The petitioners in that proceeding achieved victory before the Trademark Trial and Appeal board. Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d 1705 (T.T.A.B. 1999).

However, that action eventually failed under the doctrine of laches, when a federal appeals court concluded that each of the petitioners had waited too long to initiate an action, measuring from the time that they had reached the age of 18.

In the meantime, another group of younger petitioners had started their own effort to get the trademark registrations cancelled. This new group of petitioners also achieved success before the TTAB.

Pro-Football Inc. appealed this decision to federal court again, but this time to the U.S. District Court for the Eastern District of Virginia, as is permitted by the trademark statute, instead of directly to the Federal Circuit.

Registration Is Not a Matter of Speech 

The court took pains to emphasize that the issues in this case implicated only trademark registrations, not trademarks as a whole.

“What is at issue here is the registration of the Redskins Marks and the benefits associated with registration, not the use of the marks,” the court said, after outlining the limits of the PTO's authority with respect to registration.

Following from this position, the court rejected Pro-Football's argument that Section 2(a) infringed its free speech rights.

“Nothing about Section 2(a) impedes the ability of members of society to discuss a trademark that was not registered by the PTO,” the court said. “Simply put, the Court holds that cancelling the registrations of the Redskins Marks under Section 2(a) of the Lanham Act does not implicate the First Amendment as the cancellations do not burden, restrict, or prohibit” the Redskins' “ability to use the marks.”

Also rejected was Pro-Football's argument that its own statement about the history and significance of “Redskins”—namely, that it is not a disparaging term—was “entitled to special protection under the First Amendment” and cancellation of the registrations had a negative impact on its ability to spread that message.

There is no “financial penalty” based on Pro-Football's speech should its registrations be cancelled, the court said. Pro-Football may go on with its speech unimpeded and continue using its trademarks.

The act of registering a trademark is the government engaging in speech, which it may refuse to do, and denying a registration is not regulation of private speech, the court concluded, citing a recent Supreme Court decision permitting the State of Texas to refuse to put an image of a Confederate flag on a license plate. See, Walker v. Tex. Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015).

The court also rejected an argument that Section 2(a) was void for vagueness under the Fifth Amendment. The court said:

Section 2(a) of the Lanham Act is not void for vagueness because (1) [Pro-Football] cannot show that Section 2(a) is unconstitutional in all its applications; (2) Section 2(a) gives fair warning of what conduct is prohibited; (3) Section 2(a) does not authorize or encourage “arbitrary and discriminatory enforcement”; and (4) Section 2(a) is not impermissibly vague as applied to [Pro-Football].

 

The court also rejected the arguments that the cancellation constituted an uncompensated taking of property by the government under the Takings Clause and did so without due process under the Due Process Clause.

These conclusions were based on the court's finding that “a trademark registration is not considered property under the Fifth Amendment.”

Also rejected were the Redskins' arguments in the alternative that the Native American petitioners had failed to prove that “Redskins” may have been disparaging to a significant group of Native Americans at the times that the registration applications had been submitted to the PTO.

The court delved into the details of the evidence presented—including scholarly, media and literary evidence, and public statements by Native Americans—and concluded that it was sufficient to support the finding of disparagement.

The issue of the doctrine of laches—which tripped up the 1992 effort to kill the registration—was brought up again by the Redskins, but the court found no significant delay on the part of the petitioners this time.

In another case arising under Section 2(a)—involving an Asian-American rock band called “the Slants”—the U.S. Court of Appeals for the Federal Circuit has decided to review en banc the question of whether the statute violates the U.S. Constitution.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Tony Dutra in Washington at adutra@bna.com

Text is available at: http://www.bloomberglaw.com/public/document/ProFootballInc_v_Blackhorse_et_al_Docket_No_114cv01043_ED_Va_Aug_/8