Trademark Law: Vehicle for Social Change?

There can be little doubt that rapidly changing technology is one of the most powerful driving forces of evolution in intellectual property law. The growing problem of illicit hacking, to take just one example, has forced businesses and individuals to seek the protections of trade secret and copyright law when more conventional means of recourse seem unworkable. Yet, one of the most intriguing developments in recent years has nothing to do with new technologies. To the contrary, it deals with trademark rights dating back over 80 years. Nonetheless, the litigation in Pro-Football, Inc. v. Blackhorse over the registrability of trademarks and service marks owned by the parent company of the Washington Redskins football team—with all of its accompanying debates, protests, and calls for action—has thrust intellectual property law into the popular consciousness in a way unmatched in recent memory. Can trademark law, of all things, really be the vehicle for socially demanded change?

It seems certain that we will have an answer to that question very soon. Pro-Football recently filed a motion for summary judgment based on the argument that the cancellation of its registrations was a violation of its First Amendment rights, so the stage is set for a constitutional decision and potentially a trial in the rocket docket of the Eastern District of Virginia. Settlement seems a virtual impossibility at this point. Team owner Dan Snyder has staunchly announced his intention to do everything in his power to keep the team name, and with Native Americans’ prior success at the U.S. Patent and Trademark Office (USPTO), multiple registrations covering marks based on the word “Redskin” will remain cancelled barring reversal by the U.S. District Court for the Eastern District of Virginia. As a result, the court now faces the unenviable task of evaluating the constitutionality of refusing registration for marks that may disparage, and it may also soon face the question of whether the term Redskins falls into that category.

Section 2(a) of the Lanham Act is at the heart of Pro-Football. It prohibits trademark registration for any mark that “[c]onsists of or comprises …matter which may disparage …persons, living or dead…or bring them into contempt, or disrepute.” On its face, this prohibition makes straightforward sense: why should the federal government expend its funds to provide the benefits of registration to the owner of an offensive trademark? Yet, Pro-Football claims that “Section 2(a), both on its face and as applied to Pro-Football by the [Trademark Trial and Appeal Board], is an impermissible content-based restriction inherently violative of the First Amendment.” This claim directly pits against one another two important values: the value of protecting free speech and the value of preventing the possible disparagement of a segment of our society.

Intellectual property law typically goes out of its way to avoid making these kinds of value choices. Since the Supreme Court case of Bleistein v. Donaldson Lithographing Co. in 1903, judges have declined to act as arbiters of whether art is of sufficient quality to merit copyright protection. Indeed, to this day the U.S. Copyright Office does not evaluate any given work “to determine whether it contains material that might be considered obscene,” much less derogatory or disparaging. Similarly, in patent law, the standard for utility is exceptionally low, and while the law claims to prohibit patents on immoral inventions, in practice generally only frivolous or illegal inventions, if any at all, are denied protection on such grounds.

By contrast, the disparagement prohibition of Section 2(a) requires the USPTO to evaluate simply whether a mark “may disparage” persons “or bring them into contempt, or disrepute.” This broad mandate is given appreciable teeth by the ability of another party to seek the cancellation of a registration on the ground that the party may be disparaged by the mark, as is the case in Pro-Football. Given the ambiguity and potential breadth inherent in the phrase “may disparage,” coupled with the lack of any corresponding definitions in the Act, it is going to be very interesting to see if the court finds that the statute is sufficiently tailored and well-defined to be constitutionally permissible. At least one circuit court, the Federal Circuit, has previously upheld the constitutionality of the law on the ground that the statute represents a legitimate exercise of Congress’s plenary spending authority. Notably, however, the Eastern District of Virginia is operating on a clean slate because the Fourth Circuit has not yet directly addressed the law’s constitutionality, and the Trademark Trial and Appeal Board, as a non-Article III tribunal, was unable to entertain Pro-Football’s request to rule on the constitutional question. With such a delicate balance of values at stake, the substantial media attention on the case, and the potential for a circuit split, it is perhaps not surprising that the Department of Justice recently intervened to defend the statute’s constitutionality. For all of these reasons, this case has been compelling from the start; but from the perspective of an intellectual property practitioner, some of the most interesting impacts of the case will only be seen in its aftermath.

What happens if the law is upheld and the cancellation of the registrations is affirmed? Pro-Football will still be able to use and protect the name under common-law rights. But there is also a good chance that a number of new, unsophisticated imitators will misunderstand the situation and begin using different Redskins marks on things like t-shirts. Although the marks at issue would not have directly applied to such uses (they cover entertainment services rather than goods), the team would likely need to ramp up costly enforcement efforts to protect its marks in the wake of new imitations. The burden of these new costs may drive the team to change its name altogether, in the process making many people very happy.

Beyond the effects on the team itself, a high-profile vindication of the law may firmly establish Section 2(a) as a powerful tool to combat the registration of other marks. Owners of marks that push the boundaries of the socially acceptable will need to factor in the financial risks of opposition to, or cancellation of, their claims in the USPTO. ABC’s new sitcom, “Fresh Off the Boat,” for example, has already garnered criticism as potentially offensive. What does that mean for the author of the book that inspired the show’s registrations of the same name? Separately, it should not be overlooked that Section 2(a) also forbids registration of “immoral . . . or scandalous matter.” This language could be used by opponents of marijuana legalization, for example, to combat the growth of marijuana businesses seeking to register their trademarks. Even though the USPTO and courts such as the Federal Circuit have adopted various standards in their applications of Section 2(a), ambiguities in the statute and these standards still leave substantial leeway for creative arguments, so it may behoove Congress to revisit Section 2(a), its ends, and the means for achieving those ends.

If, on the other hand, Section 2(a) is found unconstitutional, there will undoubtedly be other efforts to combat the team’s use of the marks. The FCC, for example, has already taken interest in the issue and may ramp up its efforts to censor use of the term Redskins if trademark law comes up short. Similarly, Congress may also ramp up its recent efforts to declare the term Redskins per se ineligible for trademark protection, or it may substantially revise Section 2(a) to bring its breadth within constitutionally permissible bounds, while still rendering the term Redskins unregistrable. Even in the marketplace itself, private broadcasting organizations will have to grapple with the option of adopting explicit policies against using the term in public broadcasts.

As a long-time Washingtonian, I would be happy to see our city’s team embrace a new name that all Americans can be proud of. As a trademark practitioner, I also hope that this case allows the courts and Congress to significantly refine and unify the standards for what constitutes a disparaging or immoral mark so that I can better guide clients in adopting and protecting names and marks. Regardless of the final outcome, it will be important to keep track of how both this case and the role of trademark law in social reform continue to evolve.