While the Washington Redskins defeated the Cleveland Browns 31-20 this past Sunday, the team suffered a loss in the courtroom on Monday. The United States Supreme Court denied writ of certiorari to hear the team’s trademarks case on appeal. One would think an NFL team would be able to federally register dozens and dozens of trademarks under the Lanham Act. However, that is not the case for owner Dan Snyder’s team.

As such, in a 2014 Trademark Trial and Appeal Board (TTAB) decision, six Redskins’ trademarks were canceled, a decision that was upheld by a Virginia-based federal judge in July 2015. Specifically, the court held that canceling the trademarks did not violate team’s free speech (i.e. First Amendment) rights and the “REDSKINS” registered marks disparaged Native Americans.

15 U.S.C. § 1052(a) – Lanham Act § 2(a)

“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it —

(a) Consists of … matter [that] may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

Source: Cornell University Law School: Legal Information Institute

Ordinarily, a party appeals his or her case to the federal court of appeals, which the Redskins did. However, the Redskins petitioned to the U.S. Supreme Court before they received a ruling from the Fourth Circuit. Nevertheless, the Redskins may still end up victorious if a similarly-situated trademarks case, which the Supreme Court will hear in June 2017, tilts in the team’s favor.

In Re Tam

In Re Tam also entails a controversial trademark, as The Slants — an Asian rock band — had their trademark registration canceled by the TTAB in 2014 because their mark (“THE SLANTS”) was disparaging to people of the Asian descent. As compared to the Redskins case, the U.S. Court of Appeals for the Federal Circuit vacated the 2014 TTAB decision. First, the court established that Section 2(a) of the Lanham Act regulated expressive speech — rather than commercial speech — and, therefore, was subject to strict scrutiny.

MeetTheSlants.jpg
One of the band’s logos

In situations that call for strict scrutiny, the government must show that the law or regulation at-issue furthers a “compelling governmental interest” that is narrowly tailored to achieve that interest. Put simply, the government must have a very good reason as to why they are restricting whatever is at issue. To the contrary, commercial speech is subject to intermediate scrutiny, which asks whether the law or regulation furthers an important governmental interest that is substantially related to that interest.

Despite the fact that commercial speech is subject to weaker scrutiny than expressive speech and assuming that barring registration on grounds of disparaging even constituted commercial speech regulation, the court still found Section 2(a) to be unconstitutional. Specifically, the court stressed that the government did not offer enough evidence allowing them to bar trademarks registrations that are disparaging. That is, all of the government’s arguments “boil[ed] down to permitting the government to burden speech it finds offensive,” which the court noted was not a legitimate interest.

Altogether, the court held that Section 2(a) was unconstitutional because it violated the First Amendment. However, the U.S. Supreme Court granted the government’s writ of certiorari on September 29, 2016.

Simon Shiao Tam’s Lawyer

“We are pleased that this matter will be reviewed by the Supreme Court of the United States, and look forward to the vindication of the First Amendment rights of Mr. Tam and the other members of The Slants.”

Source: Washington Post

What Lies Ahead?

Most likely, the Asian rock band will heavily rely on the U.S. Court of Appeals for the Federal Circuit’s ruling, arguing that their First Amendment rights have been violated because the government barred their trademark registration based on unconstitutional grounds. On the other hand, the government will argue, as referenced in its writ of cert. brief, that Section 2(a) “does not prevent [Tam] from promoting his band using any racial slur or image he wishes. It does not limit how respondent may advertise, what songs he may sing, or what messages he may convey.” Of course, both parties will present more substantive & in-depth arguments than the aforementioned ones.

The Redskins will gain significant traction in their disparaging trademark battle if the Supreme Court finds for Tam and holds that the band’s First Amendment rights were violated. However, while a ruling in favor of the government will not completely thwart the Redskins’ likelihood of regaining federal trademark registration, it certainly does not help the team’s chances.

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Sources

  1. Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan & Courtney Tsotigh v. Pro-Football, Inc., Cancellation No. 92046185 (T.T.A.B. June 18, 2014), http://ttabvue.uspto.gov/ttabvue/ttabvue-92046185-CAN-199.pdf.
  2. In re Simon Shiao Tam, 108 U.S.P.Q. 2d. 1305 (TTAB 2013), http://ttabvue.uspto.gov/ttabvue/ttabvue-85472044-EXA-12.pdf.
  3. Pro-Football Inc. v. Blackhorse, 112 F.Supp.3d 439 (E.D. Va. 2015). 

  4. Cornell University Law School (last visited Oct. 5, 2016), https://www.law.cornell.edu/uscode/text/15/1052.
  5. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015).
  6. Lee v. Tam, No. 15-1293, 2016 WL 1587871 (Sept. 29, 2016).
  7. Lawrence Hurley, U.S. top court refuses to hear Redskins trademark appeal, Reuters: Sports News (Oct. 3, 2016),  http://www.reuters.com/article/us-usa-court-redskins-idUSKCN1231G2feedType=RSS&feedName=sportsNews&utm_content=buffer28d42&utm_medium=social&utm_source=twitter.com&utm_campaign=buffer.
  8. Robert Barnes, Supreme Court to review case important to Redskins trademark fight, Washington Post (Sept. 29, 2016), https://www.washingtonpost.com/politics/courts_law/supreme-court-to-review-case-important-to-redskins-trademark-fight/2016/09/29/acf63382-8638-11e6-a3ef-f35afb41797f_story.html?postshare=7111475502728916&tid=ss_tw.
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