A federal district court in Virginia has affirmed the U.S. Patent and Trademark Office’s (“USPTO”) 2014 decision to cancel the Washington Redskins’ federal trademark registrations pursuant to Section 2(a) of the Lanham Act. Mem. Op., Pro-Football, Inc. v. Blackhorse, et. al., No. 1:14-cv-01043-GBL-IDD (E.D. Va. July 8, 2015). This provision of the federal trademark law prohibits the registration of trademarks “which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
District Judge Gerald Bruce Lee held on cross-motions for summary judgment there was no genuine issue of material fact that the Redskins’ trademark registrations met the 2(a) disparagement standard. In evaluating a 2(a) disparagement claim, courts assess whether the mark may have disparaged a substantial composite of the target group at the time when the trademark was registered. The relevant time period in this case is 1967 to 1990, during which time the Washington Redskins obtained six federal trademark registrations encompassing the word “REDSKINS.”
In addition to reviewing the USPTO’s Trademark Trial and Appeal Board’s (“TTAB”) disparagement analysis, the court addressed and rejected Pro-Football’s constitutional challenges to Section 2(a) of the Lanham Act that prompted the U.S. government to intervene in the proceedings.
The decision, issued on July 8, 2015, is the latest round in a dispute that has been ongoing for more than twenty years when a group of individuals of Native American heritage first petitioned the TTAB in 1992 to cancel the professional football team’s trademark registrations. Harjo v. Pro-Football, Inc., 50 U.S.P.Q. 2d 1705 (TTAB 1999), rev’d, 284 F. Supp. 96 (D.D.C. 2003).
Although the petitioners originally prevailed in this first set of proceedings before the TTAB, the cancellation order was overturned on appeal by the D.C. district court on dual grounds: (1) the disparagement conclusion was not substantiated by sufficient evidence in the TTAB record and (2) the plaintiffs’ claims were time-barred by the equitable doctrine of laches. Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 145 (D.D.C. 2003). The team, which is owned by Pro-Football, Inc., had raised a free speech challenge to the Lanham Act as early as this first appeal, but the court declined to address it at the time as a moot point. The laches issue became the focal point of further appeals and remands and ultimately defeated the petitioners’ claims. Id.
The July 8, 2015 decision stems from Pro-Football’s appeal of a second cancellation action filed with the TTAB in 2006. This action was brought by different petitioners, all of whom who had just reached the age of majority, in order to circumvent the Redskins’ previously successful laches defense. The TTAB made headlines last summer when it ordered the cancellation of the Redskins’ trademarks for a second time, a decision that the Washington Redskins quickly appealed to the Eastern District of Virginia. Blackhorse v. Pro-Football, Inc., 111 U.S.P.Q. 2d 1080 (TTAB June 18, 2014).
In addition to affirming the TTAB’s disparagement finding, Judge Lee also rejected Pro-Football’s argument that Section 2(a) of the Lanham Act is unconstitutionally vague under the Fifth Amendment. Pro-Football’s claim that the law constitutes an unconstitutional taking similarly failed.
On Pro-Football’s First Amendment challenges, the court held that
- The federal trademark registration program is government speech and thus exempt from First Amendment scrutiny; and
- Section 2(a) does not implicate the First Amendment because the restriction on registration “does not restrict the public debate on public issues as the mark owner is still able to use the mark in commerce.”
The court emphasized that cancelling the trademark registrations does not prevent the Washington Redskins from keeping the team name or continuing to use the mark, stating “[w]hat actions, if any, [the team] takes going forward with the marks are a business judgment beyond the purview of this Court’s jurisdiction.”
Although the Washington Redskins may continue using their trademark without a registration, courts have yet to address the question whether common law trademark rights are enforceable for a mark that is considered disparaging under the Lanham Act.
Given the profitability of team merchandise sales and the recurring problem of unauthorized distribution of products bearing the team’s name and logos, this unresolved question of enforcing common law marks will be an important consideration in the future for the Washington Redskins and other common law trademark owners.
State trademark registrations may pose a viable alternative for marks that cannot be registered on the Federal Register. Washington, D.C., however, does not have a local trademark register, and state trademark laws also vary in whether they incorporate a disparagement restriction.
Regardless, the long litigation history of the Washington Redskins name indicates that this matter will likely go through yet another appeal before the team has to decide whether to change its name or pursue trademark protection through alternative means.