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Aug. 5 — The Washington Redskins are following through with their promise to appeal a ruling that several of its trademark registrations should be cancelled because the name “Redskins” is a disparaging term, according to a notice filed Aug. 4 with the U.S. District Court for the Eastern District of Virginia.
In July, the court ruled that the term “Redskins” was disparaging to a significant component of Native Americans and thus six trademark registrations that the team had obtained from 1967 to 1990 should be cancelled by the Patent and Trademark Office.
This case and another trademark registration proceeding involving Asian-American musical group the Slants set the stage for two federal courts to address the constitutionality of the government's refusal to register disparaging trademarks in the upcoming months, according to members of the trademark law community consulted by Bloomberg BNA
The American Civil Liberties Union filed an amicus brief in both proceedings arguing that Section 2(a) of the Lanham Trademark Act, which denies registration to disparaging trademarks, violates free speech rights under the First Amendment.
The Slants case is scheduled for oral argument in early October before the U.S. Court of Appeals for the Federal Circuit. The Redskins' notice of appeal now sets the stage for the Fourth Circuit to address many of the same issues surrounding Section 2(a).
Section 2(a) of the Lanham Trademark Act of 1946, 15 U.S.C. §1052(a), states that the Patent and Trademark Office will not register a trademark that “may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
In the case of the Redskins, a group of petitioners of Native American origin argue that “Redskins” is disparaging to the Native American community. In the Slants case, the PTO has ruled that the term “Slant” is disparaging to Asian-Americans.
The arguments that the two appeals courts will be presented with include the assertion that refusing a trademark registration represents an uncompensated taking of property by the federal government in violation of the Fifth Amendment and that denial of a registration constitutes infringement of the free speech rights of the registration applicant.
Alan S. Cooper of Westerman Hattori Daniels & Adrian LLP, Washington, said that his sense was that the free speech issue was correctly decided by the federal district court in Virginia, but that the “real question is whether the evidence relied on by the District Court to support the conclusion of disparaging significance during the relevant time frame when the registrations issued (1967-1990) is sufficient.”
For example, Cooper said, if there is evidence that a Native American football team had itself used the name “Redskins,” then that would work against the district court's finding of disparagement.
The flip side of the free speech argument is that registration represents an issue of speech not on the part of a trademark applicant, but rather speech on the part of the government, which may choose to issue or not issue a registration.
The district court held that registering a trademark constitutes speech on the part of the government, referring to the Supreme Court's recent holding regarding the State of Texas's refusal to put the Confederate flag on license plates in Walker v. Tex. Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015).
Siegrun D. Kane of Kane Advisors LLP, Briarcliff Manor, N.Y., said she believed that the court “properly determined that the disparagement statute Section 2(a) was government speech immune from First Amendment attack and thus constitutional.”
This question is the “biggest issue that will be appealed,” Joshua Schiller of Boies, Schiller & Flexner LLP, New York, said. “Absent that holding, the denial of registration” would trigger free speech analysis “even though the Federal Circuit held that it did not in In re Tam while also leaving room in dicta for this question to be considered again, which it now will.”
Schiller was referring to an April ruling by the Federal Circuit that the PTO had correctly refused to register “The Slants” under Section 2(a) as the name of an Asian-American rock band (In re Tam, 785 F.3d 567, 2015 BL 111109 (Fed. Cir. 2015)(76 PTD, 4/21/15).
In May, the full Federal Circuit decided to reconsider the In re Tam ruling en banc after a challenge by the American Civil Liberties Union on free speech grounds (114 U.S.P.Q.2d 1469 (Fed. Cir. April 27, 2015)(81 PTD, 4/28/15).
With the appeal in the Redskins case, there is now a possibility that there will be two federal appeals courts ruling on the constitutionality of Section 2(a) in close proximity. How the two courts' rulings will eventually interact remains to be seen.
“It depends in part on whether the ‘Slants' case is overturned or simply rewritten by the Circuit,” Schiller said. Given the reference to the Supreme Court's Walker decision, “it is very possible that with or without en banc review the ‘Slants' case will be modified or brought into balance with any appeal by the Redskins.”
Schiller said that the question of whether losing the registrations represented a loss of property for the Redskins will come up again.
The Redskins had argued that the PTO's cancellation of the registrations represented an uncompensated taking of property by the government in violation of the Fifth Amendment.
“This will be raised on appeal and challenged by the Redskins because the Court here said that the Redskins lost no tangible property interest[,] just the rights associated with registration,” Schiller said in an e-mail message to Bloomberg BNA. “I would imagine the Redskins will stay far away from the courts until they have taken the appeal of this case as far as they can.”
Robert J. Kenney of Birch, Stewart, Kolasch & Birch LLP, Falls Church, Va., said that whether or not the Redskins suffer any concrete setback with respect to their legal rights, it is significant that a court has found that the team's “Redskins” trademarks “may disparage a substantial composite of Native Americans.”
This is “a fairly low threshold to meet,” Kenney said, because it does not require proving actual disparagement, and a “substantial component” need not be a majority.
However, the Redskins might have a stronger position with the procedural posture of the case, given that this decision came in the context of a motion for summary judgment, he said.
Resolving the matter at this stage means that the court found no genuine issue of material fact to be resolved by a trial.
“This is a fairly high standard to meet,” Kenney said, and the team might focus on this question, arguing that the issues should at least be put to trial.
Should the district court's rulings survive any appeals intact, Cooper said that the fact that largely circumstantial evidence was used to kill the Redskins' registrations in this case might make it easier for future cancellation petitions based on Section 2(a) to succeed.
So far as the Redskins are specifically concerned, team owner Daniel M. Snyder has been adamant in his public statements regarding his intent to keep the name unchanged.
Nonetheless, “it seems likely that there will be additional pressure on Dan Snyder to change the team's name from various public groups as well as some individuals,” Cooper said.
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Cooper and Kane are members of this journal's advisory board.
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