Touro Law Review BLOG

By Christine DiGregorio, J.D. Class of 2017 Touro Law Review Senior Staff Member

The Washington Redskins were granted a delay for its oral arguments, originally scheduled for December 9, 2016, by the United States Court of Appeals for the Fourth Circuit.[1] The Redskins have been fighting a drawn out battle to regain trademark protection of their mark, the “Redskins,” since it was canceled in 2014.[2] The delay was granted as the court awaits further review of a similar case now pending before the Supreme Court of the United States that may have a substantial influence over the Redskins case.[3] This similar case involves an Asian American Rock Band, known as “the Slants,” who were denied trademark protection by the United States Patent and Trademark Office in 2011.[4] Similar to the Redskins, whose mark was canceled because it was deemed disparaging,[5] the band was denied trademark protection because the Patent and Trademark office believed the name was likely to disparage the Asian American population.[6]

Trademark protection is governed by the Lanham Act,[7] which was created by Congress in 1946 as a way to register and protect trademarks.[8] Under the Lanham Act, a mark must be registered unless it is deemed to fall within certain unprotected categories by the Trial and Appeal Board at the Patent and Trademark Office.[9] One such category is if the mark is deemed disparaging.[10] This category was the grounds for the denial of protection for The Slants and for the cancellation of registration for The Redskins.[11]

The Slants’ argument in its appeal of the denial of their trademark was twofold. First, Mr. Tam, the front man for the rock band, argues that the U.S. Patent and Trademark Office erred in finding that the mark was disparaging.[12] Second, he asserts that § 2(a) of the Lanham Act is an unconstitutional violation of the First Amendment.[13] Notably, Mr. Tam emphasizes that the purpose of using the name “The Slants,” was to reclaim the negative stereotype, and instead recognize the fact that he and his band members are proud of being Asian.[14] Fortunately for the Slants, the court held that “the disparagement provision of § 2(a) is unconstitutional because it violates the First Amendment.”[15] The United States Patent and Trademark Office filed a writ certiorari to the Supreme Court on April 20, 2016, appealing the decision.[16]

Unlike the Slants, the Redskins have not been as successful in their fight for trademark protection. Although originally granted trademark protection in 1967,[17] the Redskins mark was canceled on June 18, 2014, after the Trademark Trial and Appeal Board found that the mark “consisted of matter that both ‘may disparage’ a substantial composite of Native Americans and bring them into contempt or disrepute.”[18] The Redskins unsuccessfully challenged the cancellation, also asserting, among other arguments, that § 2(a) violates the First Amendment.[19] In contrast to the decision in In re Tam,[20] the court found that § 2(a) did not violate the First Amendment.[21] The court held that the cancellation of the Redskins mark does not “burden, restrict, or prohibit Pro Football Inc.’s ability to use the marks,” and therefore does not violate the First Amendment.[22] The court emphasized that the cancellation of the mark did not preclude Pro Football, Inc.’s use of the mark in commerce, or prevent sports fans from buying its memorabilia.[23] Rather, the cancellation of the mark simply means that the Redskins no longer have the right to the exclusive use of the mark, and therefore can no longer challenge other uses in federal court.[24] The Redskins appealed this decision to the United States Court of Appeals for the Fourth Circuit on October 30, 2015.[25]

The Supreme Court agreed to hear the Slants’ argument,[26] and will hear the oral arguments from both sides in the pending case Lee v. Tam[27] during its 2016-2017 session. Although a date has not been set, it is likely the Fourth Circuit will wait for a definitive ruling from the Supreme Court on the issue of whether § 2(a) is disparaging before deciding the matter of the Redskins’ trademark. The Supreme Court decision on the issue will provide the Fourth Circuit with binding precedent to follow in its decision in the Redskins case. Until then, the game remains delayed, and the Redskins continue to wait for the “referees’” final decision regarding its trademark protection.

[1] Robert Barnes, Timeout called in Redskins Name Case, The Washington Post (Oct. 18, 2016), https://www.washingtonpost.com/local/timeout-called-in-redskins-name-case/2016/10/18/b6b30dd0-908a-11e6-9c52-0b10449e33c4_story.html.

[2] Pro Football Inc. v. Blackhorse, 112 F.Supp. 3d at 451.

[3] Id.

[4] Ian Shapira, Supreme Court to Review Case Important to Redskins Trademark Fight, The Washington Post (Sept. 29, 2016), https://www.washingtonpost.com/politics/courts_law/supreme-court-to-review-case-important-to-redskins-trademark-fight/2016/09/29/acf63382-8638-11e6-a3ef-f35afb41797f_story.html.

[5] Pro Football Inc. v. Blackhorse, 112 F.Supp. 3d 439, 451 (U.S. Dist. 2015).

[6] In re Tam, 808 F.3d 1321, 1331-1332 (Fed. Cir. 2015).

[7] 15 U.S.C. §1051.

[8] In re Tam, 808 F.3d at 1328.

[9] Id. at 1329.

[10] See 15 U.S.C. §1052(a) (“No trademark … shall be refused registration on the principal of its register on account of its nature unless it consists of … matter which may disparage or falsely suggest a connection with a persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”).

[11] In re Tam, 808 F.3d at 1331-32; Pro Football Inc. v. Blackhorse 112 F.Supp. 3d at 451.

[12] In re Tam, 808 F.3d at 1332.

[13] Id.

[14] Id.

[15] Id. at 1358.

[16] Supreme Court of the United States, SCOTUSblog, http://www.scotusblog.com/case-files/cases/lee-v-tam/ (last visited Oct. 23, 2016).

[17] Pro Football Inc. v. Blackhorse, 112 F.Supp. 3d at 448.

[18] Id. at 451.

[19] Id.

[20] In re Tam, 808 F.3d at 1331-1332.

[21] Pro Football Inc. v. Blackhorse, 112 F.Supp. 3d at 457.

[22] Id. at 455.

[23] Pro Football Inc. v. Blackhorse, 112 F.Supp. 3d at 490.

[24] 15 U.S.C. § 1072, 1115, 1121.

[25] Opening Brief, amlaw.com, http://pdfserver.amlaw.com/nlj/Pro-Football%20opening%20brief.pdf (last visited Oct. 23, 2016).

[26] Supreme Court of the United States, SCOTUSblog, http://www.scotusblog.com/case-files/cases/lee-v-tam/ (last visited Oct. 23, 2016).

[27] Lee v. Tam, 2016 LEXIS 4462.