The U.S. Supreme Court announced today that it will review whether the U.S. Trademark Office can deny registration of offensive trademarks or whether such prohibition violates the First Amendment. The dispute affects the constitutionality of Section 2(a) of the Lanham Act, which prohibits registration of such marks. The case originated in 2013 following the Office’s refusal to register THE SLANTS as a mark for an Oregon rock band on grounds that it was a derogatory slang phrase for people of Asian descent Continue Reading The SLANTS Trademark Will Play One More Gig: U.S. Supreme Court to Decide Constitutionality of Ban on Disparaging Trademarks
Written by: Susan Neuberger Weller
The Washington Redskins professional football team will soon not only be battling Native Americans over the registrability of the REDSKINS trademark, but will also have to cross swords with the US Government. Last week, the US Department of Justice filed a Notice of Intervention in the appeal of the US Trademark Trial and Appeal Board’s decision last summer to cancel the REDSKINS trademark registrations. As we reported in our earlier post, the Washington team raised in its appeal constitutional issues that could not be decided by the TTAB. These include the following:
- Trademarks are constitutionally protected commercial speech and Section 2(a)’s provisions prohibiting the registration of “disparaging, “”contempt[uous]”, or “disreput[able]” aspects of a mark are an unconstitutional, content-based restriction on speech that violates the First Amendment to the US Constitution.
- Section 2(a) is facially overbroad and unconstitutionally void for vagueness in violation of the First Amendment to the US Constitution since, inter alia, the terms “disparage,” “may disparage,” “contempt,” “disrepute,” and “may bring…into contempt or disrepute” are not defined in the Lanham Act or its legislative history.
- The cancellation of the REDSKINS registrations violate the team’s due process rights provided by the Fifth Amendment to the US Constitution by unreasonably depriving the team of federally granted property rights that it has relied on for almost half a century.
- The Board’s Order canceling the REDSKINS trademark registrations is an unconstitutional taking of Pro-Football’s property without just compensation in violation of the Takings Clause of the Fifth Amendment to the US Constitution.
The Notice of Intervention states that the US Government will be defending the constitutionality of Section 2(a) of the Lanham Act, and is entitled to do so as a matter of right pursuant to the Federal Rules of Civil Procedure and statute.
As of this writing, no responsive pleadings have yet been filed by either the team or the Native Americans. Stay tuned.
Written by: Susan Neuberger Weller
The Washington Redskins trademark controversy is far from over. Despite the fact that certain news and sports commentators and mainstream newspapers and organizations have announced that they will no longer use the term “Redskins” when reporting on the National League football team, and the fact that a variety of public figures, including President Obama, have expressed an opinion that the name should be changed, team owner Dan Snyder continues to steadfastly defend the name as expressing only “honor and respect” and state that he has no intention of ever changing it. In support of that promise, the team has appealed the cancellation of its US trademark registrations by the US Trademark Trial and Appeal Board which held in a split 2-1 decision that the REDSKINS trademark was disparaging to Native Americans and, therefore, no longer eligible for continued registration. Continue Reading Washington Redskins Challenge the Constitutionality of Section 2(a) of the Lanham Act
Written by: Susan Neuberger Weller
The overwhelming public reaction to the US Trademark Trial and Appeal Board’s June 18 decision canceling six REDSKINS trademark registrations on grounds that the mark disparaged Native Americans has been impressive. However, news articles, op-ed pieces, informal commentary, and anecdotal stories all evidence wide range confusion about and a misunderstanding of the meaning and impact of the decision. This is an effort to set the record straight on the legal effect of this decision.
- The Washington Redskins still own valid and enforceable federal trademark rights in the REDSKINS marks. The federal registrations will not be formally canceled until all appeals have been exhausted, which will take years given the fact that the Redskins have indicated an intent to appeal the decision.
- Unlike most other countries in the world, US trademark law recognizes fully valid and enforceable trademark rights at common-law in trademarks that are being used but which are not registered. Thus, even if the registrations are eventually canceled, the Redskins will continue to own common-law rights in the trademarks which can be fully enforced in state and federal courts against third-party infringers.
- While the trademarks are still registered, the federal trademark registration notice ® may be used in connection with the REDSKINS marks. If these registrations are eventually canceled at the end of the legal process, the team can continue to use the REDSKINS marks and can use the unregistered trademark notice ™ with the marks.
- Anyone who thinks the Washington REDSKINS trademark is now up for grabs and can be used without incident is sorely mistaken, and anyone who has already begun to make unauthorized use of any of the REDSKINS marks is just asking for trouble. Should it choose to do so, the Redskins can still bring suit for infringement throughout the country.
- This decision is not based on a new law or any new Federal Government action, power, position, or initiative. The Section of the Trademark Act upon which the Trademark Trial and Appeal Board based its decision has been in existence and has been applied since 1946. The US Trademark Office, the Board, and courts around the country have regularly and for years refused to register trademarks and have canceled existing trademark registrations which were determined to be immoral, deceptive, scandalous, disparaging, or which brought persons, living or dead, into contempt or disrepute. The list of such marks is quite lengthy.
- Moreover, this is not a new case. These disparagement claims have been around for decades. This the second time that the Board has canceled these REDSKINS registrations on grounds of being disparaging to Native Americans. The first case, which was initially brought in 1992 and which was not litigated to a conclusion until 2010, was finally dismissed on grounds that had nothing to do with the disparagement issue. Rather, the case was dismissed on grounds of laches, which means that the specific Native Americans who filed the first case waited too long to do so and that delay prevented the case from moving forward.
- Until the registrations are formally canceled, which will be years from now if appeals are pursued, the REDSKINS trademark registrations will continue to be recorded with US Customs. This means that any unauthorized merchandise bearing a REDSKINS trademark which attempts to enter the country is still subject to seizure at the border by US Customs.
So, the Washington Redskins’ trademark rights are not dead and the REDSKINS trademark saga is far from over. Stay tuned.
Written By: Susan Neuberger Weller
A three-judge panel of the US Trademark Trial and Appeal Board (TTAB), for the second time and in a 2-1 decision, has held that the REDSKINS trademark used in connection with professional football and related services by the Washington Redskins National Football League team was disparaging to a substantial composite of Native Americans between 1967-1990, the time during which the registrations issued. It also held that the defense of laches did not apply to a disparagement claim where the disparagement pertains to a group of which the individual plaintiff or plaintiffs comprise one or more members. Accordingly, it ordered the registrations at issue canceled as violations of Section 2(a) of the Trademark Act. The cancellation of the registrations has no effect on the team’s ability to continue to use the REDSKINS marks.