July 13, 2015 Practice Points

Cancellation of Washington Redskins' Trademark Registration Upheld

The Washington Redskins trademark registration saga was supplemented by an Eastern District of Virginia ruling this past Wednesday, in which Judge Gerald Bruce Lee upheld the Trademark Trial and Appeal Board's decision to cancel Pro-Football Inc.'s trademark registrations because they are disparaging to Native Americans, in violation of section 2(a) of the Lanham Act.

By Jessica Watkins

The Washington Redskins trademark registration saga was supplemented by an Eastern District of Virginia ruling this past Wednesday, in which Judge Gerald Bruce Lee upheld the Trademark Trial and Appeal Board's decision to cancel Pro-Football Inc.'s trademark registrations because they are disparaging to Native Americans, in violation of section 2(a) of the Lanham Act. The court also reaffirmed the constitutionality of section 2(a), holding that it does not violate the First Amendment, is not void for vagueness, and does not violate the Due Process or Takings Clauses of the Fifth Amendment.

Denying Pro-Football's motion for summary judgment based on the claim that section 2(a)'s restrictions on trademark registration violate the First Amendment, the court held that section 2(a) does not burden free speech, public discourse, or the ability to use the mark in commerce. In what can only be described as a judicial slam dunk, Judge Lee aptly referenced Allen Iverson to illustrate his point.

Just as Allen Iverson once reminded the media that they were wasting time at the end of the Philadelphia 76ers' season "talking about practice" and not an actual professional basketball game, the Court is similarly compelled to highlight what is at issue in this case—trademark registration, not the trademarks themselves.

The court further held that the federal trademark registration program is government speech exempt from First Amendment scrutiny under the Walker, Fourth Circuit, and Rust tests. Just as in Walker v. Tex. Div, Sons of Confederate Veterans, Inc., where a Texas specialty license plate program was held to be government speech, the Virginia court held that the trademark registration program is government speech that (1) communicates a message of government approval, (2), is closely associated with the government in the minds of citizens, and (3) allows the government to exercise editorial control over which marks are ultimately registered. Subscribing to the Fourth Circuit's "hybrid" test, the court found the registration program to have a central government purpose (i.e., the approval of trademarks) for which editorial control is exercised by the government. However, the court held that one factor in this analysis did militate against a finding of government speech: trademark owners are the ones ultimately responsible for the content of this speech, as they apply for registration and defend their marks against government challenge. Finally, the court relied on the reasoning in Rust v. Sullivan, where the Supreme Court held that the government did not violate the First Amendment when it prevented doctors from using Title X funding to engage in abortion-related activities because "when the Government appropriates public funds to establish a program it is entitled to define the limits of that program." Applying that logic to section 2(a) of the Lanham Act, the court held that the restriction on the registration of "disparaging" marks is within the government's constitutional ambit, particularly because participation in the registration program is not mandatory.

The court also denied Pro-Football's motion for summary judgment on the issue of section 2(a) being void for vagueness. The court held that the law is not enforced discriminatorily and provides fair warning of what kinds of marks are prohibited. Furthermore, the court held that the copious evidence—dictionary, socially, and culturally-based—confirming the term "redskins" as disparaging to Native Americans at the time Pro-Football's trademarks were registered also provided the defendant with ample opportunity to grasp the derogatory nature of its marks.

Finally, the court denied Pro-Football's motion for summary judgment concerning the Due Process and Takings Clauses, holding that these claims failed because trademarks do not constitute property for Fifth Amendment purposes. The court also rejected Pro-Football's laches claim, holding plaintiff Amanda Blackhorse had petitioned TTAB in a timely fashion and that the public interest in this case moving forward outweighed a laches finding.

Keywords: intellectual property, litigation, Washington Redskins, trademark, logo, Lanham Act, Pro-Football

Jessica Watkins is with BakerHostetler in Philadelphia, Pennsylvania.


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Jessica Watkins – July 13, 2015