Redskins Trademark Fumble
The LAW FIRM OF DAYREL SEWELL, PLLC is pleased to announce that Messrs. Sewell’s and Fine’s recent, featured publication, “The “Redskins” Trademark: Turn-over on Downs”, appears in this month’s IPFrontline newsletter (Trademark Turn-over on Downs).
For decades, the National Football League’s “REDSKINS” trademarks have been under siege. Activists, concerned citizens, Native American groups, lawyers, and politicians have boisterously levied meritorious arguments against a trademark that has defined an American professional football team for almost a century. While this coalition has attracted a great deal of societal attention, it has only recently secured judicial support.
For decades, the NFL has stood firmly behind its “Redskin” trademark, as has the majority of Redskins fans. The term “redskin” subsequently no longer enjoys widespread use in America as a word describing the Native American people. The case, Pro-Football Inc. v. Blackhorse, offers an extensive analysis of the term and its implications. After carefully weighing the evidence, the Eastern District of Virginia ultimately determined that the term “redskin” is disparaging to the Native American population, and is subsequently undeserving of continued federal registration.
In sum, the Eastern District of Virginia affirmed the TTAB determination that the term “redskins” would not enjoy continued registration as a trademark on the basis that the term is, and was always, likely to disparage a “substantial composite” of the Native American population.
Today, it is largely undisputed that the term “redskin” is, by definition, offensive as a descriptor for Native Americans. Fast-forwarding, several years later, the NFL’s Washington Redskins team is now known as the Washington Commanders; it was only a matter of time before the team’s ownership wilted under the mounting legal, economic, and public policy pressures.
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Andrew
In regard to the conclusions reached by the Eastern District of Virginia in Blackhorse, some significant issues arise. In regard to the “may disparage” language under 2(a) of the Lanham Act, it appears that there may be some merit to Pro-Football, Inc.’s argument that the language is vague. In their brief filed October 30, 2015, Pro-Football, Inc. argues that the language in 2(a) is vague, and fails regardless of the level of scrutiny applied. This argument focuses, not on the REDSKINS trademark itself, but on the constitutionality of the provision that would allow for the TTAB to refuse to register the mark.
The argument, in part, lies on the fact that it is unclear what constitutes disparagement. While Pro-Football, Inc. equates this to the definition of annoying in Coates v. City of Cincinnati, 402 U.S. 611 (1971), it is possible the United States Court of Appeals for the Fourth Circuit, where Pro-Football, Inc. filed its appeal, will disagree, and find that the term disparage is not vague. This construction of the meaning of disparagement leads to a more technical argument over the term disparage, as opposed to whether the term REDSKINS is disparaging in and of itself.
Another aspect of the Eastern District of Virginia Court’s reasoning that is suspect is the reasoning that registration of the mark can be seen as approval of the mark. Citing the U.S. Supreme Court in Pleasant Grove City, Utah v. Summum, 555 U.S. 460, 467, 129 S.Ct. 1125, 172 L.Ed.2d 853 (2009), the Virginia Court argued that government speech is not First Amendment Speech, and thus the TTAB’s decision to refuse the continued registering of the REDSKINS trademark was proper.
However, this argument is flawed in a number of ways. As the brief of Pro-Football, Inc. states, there are a significant number of inappropriate, offensive, and negative trademarks registered by the TTAB. It is difficult to argue that the registering of these trademarks in some way expresses Government approval of these marks. The Government merely approves the trademarks for the purpose of protecting the interests of the holder of the trademark.
While the argument can be made that in approving the trademark, the Government is in some way validating that the mark warrants protection. However, in this case, that argument loses traction when faced with the reality of the other registered trademarks that can be found. There are numerous other offensive trademarks, though the truth is many of these are not found in an enterprise as vast and valuable as the National Football League.
Based upon this reasoning, it would appear then that the TTAB may need to go back and review all offensive and otherwise inappropriate trademarks, as the Eastern District of Virginia here has determined these marks express, at the very least, an approval of the mark – for registration purposes – by the Government.
Adrien
The Washington Redskins team has been embattled over controversy surrounding their name for decades. The controversy arises because the term “redskin” is in fact a racial slur discriminating Native-Americans. In 2015, the Eastern District Court of Virginia canceled the team trademark pursuant to Section 14 of the Trademark Act of 1946 (US), 15 U.S.C. 1064 (c) on the grounds that the marks disparaged persons and brought them into contempt and disrepute. This case raises three important questions that will be addressed in turn here: 1) whether it is necessary for the government to ban offensive trademarks; 2) when is a trademark deemed offensive; and finally 3) whether the regulation of offensive trademarks infringe on freedom of speech.
I. THE NECESSARY BAN OF OFFENSIVE TRADEMARKS
A trademark is: “a device, word or combination of words, or symbol that indicates the source or ownership of a product or service.” (Gale Encyclopedia of American Law, Ed. Donna Batten. Vol. 10. 3rd ed. Detroit: Gale, 2010. P.74).
Trademark registration is subject to several restrictions. For instance, it is prohibited to register a mark liable to create confusion to a mark that has been previously registered. In the present case, the restriction at issue is the prohibition of an offensive trademark. There are several public policy reasons buttressing the prohibition of offensive trademarks. First, and foremost, racially charged trademarks lead to the perpetuation of harmful stereotypes and the promotion of discrimination. Because it is the role of government to promote and maintain social cohesion, it is not only appropriate but a duty for the government to refuse federal protection for a mark that insults, incites criminal behavior, and/or promulgates other obscenities. In fact, the prohibition of offensive trademark registration is perhaps even more important nowadays since recent studies show that the use of offensive slogan is becoming a key differentiation tool used by companies in marketing strategies (Christine Haight Farley, Stabilizing Morality in Trademark Law, American University Law Review, Vol. 63, p.1021).
The Paris Convention for the Protection of Industrial Property (WIPO), clearly allow countries to refuse trademark protection when: “they are contrary to morality or public order and, in particular, of such a nature as to deceive the public.” (Article 6.2 WIPO). In the United States, the Trademark Act of 1946 (Lanham Act) contains a provision prohibiting offensive trademarks. Section 2(a) of the Lanham Act, explicitly prevents registration of certain categories of marks including those that: “[c]onsist] of or comprise immoral . . . or scandalous matter; or matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
The Lanham Act is consistent with the trademark laws of other countries. For example, in France article L.711-3 of the Code of Intellectual Property prohibits trademarks that disrupt public order. In the present case, it is precisely in application of the Lanham Act that Native-American associations have successfully obtained the cancellation of the redskins trademark. In arguendo, assuming that it is indisputable that the ban of offensive trademark is a necessity, the test of offensiveness should be narrowly defined.
II. WHEN IS A TRADEMARK DEEMED OFFENSIVE?
In it is appeal of the Trademark Trial and Appeal Board (TTAB) decision, the football team challenged the test defining offensive trademark, arguing that the test is too vague. It is true that behind the syntax of the 1946 Trademark Act, it is rather difficult to fully grasp what is the test of offensiveness currently being applied. As noted above, the Act prohibits the disparagement of persons. In the case at hand, the term redskin was found by the court to disparage Native-Americans. The notion of disparagement is however overly-inclusive, because all trademarks potentially disparage at least someone or something. Because the test of offensiveness is currently too vague, it opens the door to arbitrary decision by courts, the USPTO, or the TTAB. In Pro-Football v. Blackhorse, the Eastern District court of Virginia dismissed this argument noting that the Trademark Act: “affords people of ordinary intelligence a reasonable opportunity to understand what conduct it prohibits.” (Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439 United States District Court (E.D. Va. 2015). Nonetheless, in the same decision, paradoxically the court set out its own the test to characterize an offensive trademark. The court explained that the disparaging of a term is established by: “a composite of (1) dictionary definition and accompanying editorial designations, (2) scholarly, literacy and media references, and (3) statements of individuals or group leaders of the referenced group terms”.
This method to determine whether a term is disparaging is bound to fail and does not add element of certainty to the vagueness of the provision. By adopting this process the decision clearly open the door to the battle of dictionaries, experts, linguists etc. In sharp contrast is the test adopted in France to define a trademark violating public order. Courts have ruled that a trademark is deemed offensive if it is: “i) a subversive slogan; (ii) inciting: violence, racial/ethnic hatred, or drug abuse; (iii) an obscene sign”(Decision of the Paris Court of Appeal dated 7 May 1979, PIBD, 1980, n°256 III. 87; Annals, 1979, p306).
Even if this test is far from perfect, it distinguishes three categories of offensive trademarks that are clearly identifiable. For instance, under this test the term redskin would not be afforded legal protection because it will be considered inciting racial/ethnic hatred. The Redskins football team argument that the trademark provision defining offensiveness is too vague is compelling, this does not however mean that the Lanham Act should be repealed, but instead that the courts and even perhaps the Supreme Court should narrowly reformulate the test of offensiveness. Because the current test of offensiveness is too vague, some have seized the opportunity to argue that any provision barring offensive trademarks should be repealed because it infringes on enumerated First Amendment freedom of speech rights.
III. IS A TRADEMARK AN ATTRIBUTE OF FREEDOM OF SPEECH?
The other main argument of the Redskins football team is that the trademark act infringes its freedom of speech. The team claims that the trademark is an attribute of free speech and therefore the regulation of the alleged offensive trademark purely and simply infringes on freedom of speech. Professor Jeannie Suk from Harvard Law School has predicted that the Supreme Court will be sensible to this argument: “In a country with such a strong commitment to free speech that even hate speech is constitutionally protected, the disparaging-trademarks provision is an anomaly”(Jeannie Suk, ‘What’s Wrong With the Redskins?’, New Yorker, 15 May 2016).
Earlier this month, the Supreme Court however rejected Redskins’ request to join a pending case challenging the government’s ban on offensive trademarks on that ground. The justices denied the football team’s petition for certiorari before judgment, which would have allowed the Redskins to jump directly to the High Court even though the lower Circuit court has yet to rule on the team’s case. Previously In Pro-Football v. Blackhorse, the Eastern District court of Virginia dismissed this argument noting that trademark cannot be identified as free speech because it is in fact government speech since the government endorses the mark by affording legal protection to the registered brand. In other words, as summarized by Professor Farley: “Trademark restrictions permit free speech without approving offensive speech”(Christine Haight Farley, New York Times, dated 4 May 2016).
This position should be approved since trademarks regulations do not interfere with freedom of speech. A company or individual is always able to freely express his or her views without the need of federal trademark protection. It is hard to see how the refusal to register a trademark would infringe on free speech, let alone a commercial speech. Perhaps the most convincing example is the situation of the Redskins football team. Although their trademark has been cancelled they currently continue to use this name as they freely choose and as their first amendment right allows them. The freedom of speech has never meant that the government should protect the messenger from any of the consequences.
Jaime
It’s interesting to look at this case two years later and see how while this may have been a moral victory for the native American community, it has done very little to affect the still large Redskins football community. Further, new common law precedent made at the federal level has worked to discredit the arguments made by the Eastern District of Virginia and make it likely that if the Redskins continue litigation, will likely succeed in reversing the decision of the Eastern District Court and allow the Redskins to regain their trademark.
In endorsing the decision of the Trademark Trial and Appeal Board (“TTAB”) to refuse to renew the registration of the “Redskins” trademark, the Eastern District of Virginia set several important precedents, the biggest of which is the assertion that the approval of trademarks themselves is government speech. As such it is not subject to the strict scrutiny that would be required if it was limiting private speech, but rather was up to the discretion of the TTAB to regulate and limit new and existing trademarks. With this decision, the Eastern District of Virginia gave the TTAB full discretion over which trademarks they would endorse or not.
Since that decision, important precedent has been set by an alternate court in the form of a decision by the US Court of Appeals for the Third Circuit in In re Tam, 808 F.3d 1321 (Fed. Cir. Dec. 22, 2015). This case involved another refusal to trademark an offensive stereotype, this time for a band attempting to trademark the name “The Slants.” The band was made up of Asian- Americans who believed that by naming themselves after this typically racial slur, they would be able to take the name back for themselves and make it lose its power to insult their race. The TTAB refused to register the trademark believing the name to be offensive and exercising the disparagement provision of 15 USCA § 1052 (“The Trademark Exceptions Statute”), believed they had the power to deny the trademark. To the surprise of many, the Third Circuit disagreed with the Eastern District of Virginia and stated that this approval process for trademarks is not government speech and rather required a strict scrutiny standard. Thus, the disparagement provision the Trademark Exceptions Statute was found to be unconstitutional.
This is not to say however that the acceptance of the trademark or even the ruling that the disparagement provision is unconstitutional meant the court or the government endorsed the mark, simply that the First Amendment is made to forbid government regulation simply because government finds speech likely to offend others. “Even when the speech ‘inflict[s] great pain,” our Constitution protects it ‘to ensure that we do not stifle public debate.’” In re Tam, 808 F.3d at 1358 (Fed. Cir. Dec 22, 2015), quoting Snyder v. Phelps, 562 U.S. 443. 461 (U.S. Mar. 2, 2011). This meant that those who wished to registered trademarks could now do so unhindered by discretion by the TTAB based on whether the mark would be considered offensive or disparaging.
In re Tam was decided only five months after Pro-Football and currently is being decided by the US Supreme Court after arguments were head on January 18, 2017. Pro-football actually filed a brief amicus curiae in support of the decision made by the third circuit in order to assist the Supreme Court in their decision on June 20, 2016. A judgement to uphold the ruling made in In re Tam would mean everything to the Redskins. It would mean that without having to continue the arduous litigation process, the Redskins could simply register the trademark once more and the TTAB would be forced to allow the mark and the Redskins would win in US Supreme Court without ever having to step into the building. The Redskins most recent endeavor in the litigation world was the attempt in October of 2016 to go to the Supreme Court but their writ of certiorari was denied, likely due to the fact that they had just accepted In re Tam’s writ of certiorari in September of 2016 and found no reason to decide the same precedent twice. As of right now, The Redskins are content to sit back and wait for the Supreme Court to decide this case which goes much further than simply allowing disparaging trademarks. A decision by the Supreme Court would set a precedent that approval for things such as copyright, trademarks, or other registrations would be subject to strict scrutiny in denying them.
Despite the controversial nature of this decision, it is likely the correct judgement was made by the Third Circuit because the first amendment should be used to protect the average citizen from all forms of government regulation on speech, offensive or not. This decision will invariably be used and abused by large companies such as the Redskins who on a moral level should probably have changed their franchise name years ago, but as a legal precedent, anything that would give the government the power to regulate anything but the most dangerous speech should be illegal. As stated in Snyder, the first amendment must allow this offensive language or else we risk the government being allowed to censor any speech it finds offensive or against the core values of the government. Censorship is a slippery slope and what might seem like a good idea at first to censor language or behavior which is clearly offensive to everyone, can quickly evolve into censorship of anything the US government finds offensive. When living in a society of truly free speech the cost can be quite high indeed, especially in the modern world where disagreement can lead to a variety of consequences.
While I hope that the Redskins do change their name soon for not only moral reasons, but also for the continued success of the franchise and the NFL at large, I don’t believe they should be legally obligated to do so. Instead the average citizen can push for change by speaking with their wallets rather than simply protesting. The average person must hit the NFL where it hurts most which is their massive pocketbooks. The end of the day, the NFL cares much more about the money they make than something like tradition. If enough people realize this and especially the fans of the Redskins themselves cease to support the team monetarily, it could lead to real change if the courts come likely upcoming decision. Disagreement and language that possibly offends are essential if the US wishes to remain the marketplace of free ideas that it promises to the rest of the world.
Jay
Despite owner Daniel Snyder’s past comments about “never” changing his team’s name, the Washington football team officially retired the “Redskins” name on July 13, 2020. Rosa Sanchez, NFL’s Washington Redskins to change name following years of backlash, ABC NEWS (July 13, 2020), https://abcnews.go.com/US/washington-redskins-change-years-backlash/story?id=71744369. “American society is undergoing a wide uprising over police brutality and systemic racism that flared after the killing of George Floyd in police custody, a widespread movement that has led to a reconsideration of statues, flags, symbols and mascots considered to be racist or celebrating racist history.” Kevin Draper, Washington and the N.F.L. Might Change the Redskins Name. Why Now?, NEW YORK TIMES (July 3, 2020), https://www.nytimes.com/2020/07/03/sports/football/washington-redskins-nickname-nfl.html. As a result of this movement, big sponsors like Nike and FedEx began to back away from the “Redskins” name. Id. In the end, the Washington football team dropped its name even though the Supreme Court of the United States overturned Pro-Football, Inc. v. Blackhorse in two subsequent trademark cases, effectively reinstating the team’s “Redskins” trademarks. This is a great example of how social and financial pressures can, at times, be more of a catalyst for change than the legal system. I believe that the Supreme Court probably came to the correct decisions despite the public’s opinions on the “Redskins” name and other offensive or politically incorrect trademarks.
In the first Supreme Court case, Matal v. Tam, An Asian-American singer (Tam) sought to register the name of his band, “the Slants,” as a trademark. Matal v. Tam, 137 S. Ct. 1744, 1747 (2017). The band chose the name, a derogatory term towards Asians, as a way to counteract the power behind the words. Id. The trademark examiner refused the registration on the grounds that the mark violated § 2(a) of the Lanham Act, which prohibits the registration of marks that may disparage persons, institutions, or beliefs. Id. The Trademark Trial and Appeal Board (TTAB) upheld the refusal to register. Id. Tam appealed to the United States Court of Appeals for the Federal Circuit, which ruled that the “Disparagement” clause of the Lanham Act was unconstitutional under the First Amendment’s free speech clause. Id. The Supreme Court affirmed the Federal Circuits’ decision even though the government argued that the disparagement clause protected federal interests in preventing underrepresented groups from being bombarded with demeaning messages in commerce and protecting “the ordinary flow of commerce from disruption caused by trademarks that support invidious discrimination.” Id. at 1164. The Supreme Court held that the above federal interests were insufficient to justify the disparagement clause’s restrictions on private speech. Id. It said that the government’s restriction of speech based on it being offensive to others “strikes at the heart of the First Amendment” and that the disparagement clause was not narrowly tailored enough to support the contention that it is necessary to protect the orderly flow of commerce. Id. at 1749.
In the second, U.S. Supreme Court case, Iancu v. Brunetti, Brunetti sought to register the mark “FUCT.” Iancu v. Brunetti, 139 S. Ct. 2294. The trademark examiner in this case refused the registration on the grounds that the mark violated the Lanham Act’s § 2(a) prohibition against registration of marks that are immoral or scandalous. Id. Similar to Matal, TTAB affirmed the examiner’s decision and the applicant appealed to the United States Court of Appeals for the Federal Circuit, which reversed the TTAB’s ruling. Id. The Federal Circuit cited Matal and held that the Lanham Act’s restriction against immoral or scandalous trademarks was unconstitutional under the First Amendment of the Constitution. Id. The Supreme Court also affirmed the Federal Circuit’s decision. It held that it could not determine if a mark is immoral or scandalous without engaging in “viewpoint discrimination”, which is “presumptively unconstitutional.” Id. at 2299. For example, the USPTO has in the past refused to register marks communicating “immoral” or “scandalous” views about drug use, religion, and terrorism. Id. at 2300. “But all the while, it has approved registration of marks expressing more accepted views on the same topics.” Id. The court concluded that this determination could not be made without taking a stance on a specific viewpoint. Id. at 2301.
Overall, the Supreme Court probably came to the right conclusion in both cases. Even though these decisions may open up the floodgate for some unpopular or possibly offensive trademarks, they provide more protection for citizens’ First Amendment rights. More importantly, it makes trademark determination less complicated. Based on some of the trademarks that the USPTO has allowed and rejected in the past under the Lanham Act, it is difficult to figure out the exact criteria that the USPTO used when making a Lanham Act determination. For example, the USPTO has in the past allowed trademarks like “The Devil is a Democrat”, “Dykes on Bikes”, “JIZZ Underwear”, “TeensDoPorn.com”, “SLUTSSEEKERS”, and “FCUK” while rejecting trademarks like “Have you heard that Satan is a Republican”, “FUCT”, “YOU CAN’T SPELL HEALTHCARE WITHOUT THC”, “KO KANE”, and more. Id. at 2300; Kevin Christopher, How One TTAB Case Reveals Continued Examination Flaws Post-Tam and Brunetti, IPWATCHDOG (Aug. 27, 2020), https://www.ipwatchdog.com/2020/08/27/how-one-ttab-case-reveals-continued-examination-flaws-post-tam-and-brunetti/id=124617/; Luke O’Neil, A List of Trademarks the Redskins Claim Are Just as Offensive as Their Own, ESQUIRE (Nov. 3, 2020), https://www.esquire.com/sports/a39397/washington-redskins-defend-logo/. This seemingly haphazard grant or denial of federally registered trademarks demonstrates that the government gets to exercise a lot of discretion when analyzing what is considered offensive. I personally am not too comfortable with the government acting as “big brother” and determining what is considered immoral, scandalous, or disparaging.
To conclude, the biggest take away from the recent court cases above and the Washington football team’s recent name change is that people’s actions can sometimes have more influence than any court case. Most likely, no amount of court cases would have caused Daniel Snyder to change his team’s name. The resulting name change was a byproduct of the widespread societal change happening around us. Although a small victory in the grand scheme of things, I believe that this situation demonstrates the power that we as a society and as consumers have in effectuating change.