Thursday, July 09, 2015

E.D. Va. Affirms TTAB: REDSKINS Marks Found Disparaging of Native Americans

The United States District Court for the Eastern District of Virginia, in a Section 21 civil action for review, affirmed the decision of the Trademark Trial and Appeal Board (114 USPQ2d 1080 (TTAB 2014)) [TTABlogged here], ordering cancellation of the federal registrations for six marks - five consisting of or comprising the word REDSKINS, and the sixth the mark REDSKINETTES - for football entertainment services, on the ground of Section 2(a) disparagement. Pro-Football, Inc. v. Amanda Blackhorse et al., 115 USPQ2d 1524 (E.D. Va. 2015).

On cross-motions for summary judgment, the court ruled that the disparagement provision of Section 2(a) does not violate the First Amendment because Section 2(a) "does not implicate the First Amendment" and because "the federal trademark registration program is government speech and is therefore exempt from First Amendment scrutiny." The court held that Section 2(a) does not violate the Fifth Amendment because it is not "void for vagueness," and it does not violate the Takings Clause or the Due Process Clause because "a trademark registration is not considered property under the Fifth Amendment."

As to the substantive issue, the court ruled that the challenged marks violate Section 2(a) because, at the time of their registration, they "may disparage" a substantial composite of Native Americans. Thc court founded this conclusion on dictionary evidence; literary, scholarly, and media references; and statements of individuals and groups in the referenced group. The court denied PFI's laches claims both because the cancellation petitioners did not unreasonably delay in bringing their Section 2(a) claim, and because laches does not apply in light of the public interest at stake.

Section 2(a) does not implicate the First Amendment because cancellation of a registration does not burden, restrict, or prohibit PFI's ability to use its marks. Furthermore, the federal trademark registration program is government speech, and therefore exempt from First Amendment scrutiny, under three pertinent precedents. Looking to the very recent Supreme Court decision in Walker v. Texas (license plates), the court found that the federal trademark registration scheme conveys the message that the Government has approved the mark, the public associates registration with Government approval of the mark, and the Government exercises editorial control over the scheme. The court also found the registration system passed the Fourth Circuit test in SCV v. Virginia and comported with the Supreme Court's decision in Rust v. Sullivan.

The court ruled that Section 2(a) is not void for vagueness because PFI could not show that it is unconstitutional in all possible applications. Nor does the Section authorize or encourage "arbitrary and discriminatory enforcement." Section 2(a) is not vague as specifically applied to PFI because PFI was on notice that its mark contained verbiage that "may disparage."

Judge Lee''s 70-page opinion includes a thorough review of the evidence submitted by the parties. The court repeatedly pointed out that even if a majority of Native Americans found the term REDSKINS to be acceptable, the term may still run afoul of Section 2(a) because that Section requires only that a substantial composite of the referenced group consider the term disparaging. Here there was significant evidence to satisfy that standard.

Amanda Blackhorse

Read comments and post your comment here

TTABlog comment: An impressive opinion by Judge Lee. Now let's see what the en banc Federal Circuit does in the SLANTS case.

Text Copyright John L. Welch 2015.


At 11:23 AM, Anonymous Anonymous said...

This decision is useful reading for those (I'm guessing many) unfamilar with the 'government speech' concept. Either or both cases are likely to ultimately present the Sup Ct with an opportunity to address the 1st Amendment challenge to the 2(a) 'may disparage a people' clause.

At 11:13 PM, Anonymous Anonymous said...

It seems to me that one of the weakest parts of this decision is that the “registration program” (whatever that means) is “government speech” and therefore exempt from the First Amendment under a recent Supreme Court decision. All this while acknowledging that trademarks are commercial speech. To me, it's not the registration program itself but the perception of the use of the registered marks that should govern whether it is considered government speech or not. If people see a small registration symbol next to, for example, a 7 Eleven sign, or next to Kellogg's Corn Flakes on a box of cereal, or next to “Fly The Friendly Skies” in a commercial for United Airlines, or next to the mark TERMINIX in an ad for insect control services, do they really think this is government speech like a message on a license plate? It's hard to believe that they would. Even if they were to notice the small registration symbol, in the context of use I think most people would most likely associate the marks with their users, as traditional trademark law says, and not as a form of government speech. We will hear more about the constitutionality of the Lanham Act soon from the Fed. Cir., but couldn't one consider the relevant part of the Lanham Act here one that places a financial burden on the speaker (by cancelling a registration and all the real economic and legal problems for the owner that necessarily follow that decision) based on the content of his speech?
Also, perhaps it is time for a higher court to revisit the holding that a mark must be disparaging when registered. Courts should read the Act as a whole and not limit an interpretation of the wording of Section 2, which, of course, was designed to be used first of all in the registration process. Therefore, the Act uses the present tense (“Consists of or comprises...”). Does it make any sense to limit the time of proof to the time of registration because of this language when the cause of action under Section 14 relating to Section 2(a) claims can be brought at any time, perhaps many years after registration? And if the Act were so interpreted, the burden of proof for plaintiffs would be a lot easier, as it should be, to get rid of registrations that become “disparaging” over the years. We all know that language and the meaning of words changes over time.
Pro Football hasn't shown a pattern of inconsistency by the PTO??? But don't these registrations and subsequent history show such inconsistency—older registrations allowed and objections being made more recently (since 1992) by the Office?
I can see holding that, because of the public interest involved, laches may not apply as a defense. But to get around a laches finding by finding new people who haven't yet reached the age of 18 seems troubling. Couldn't laches be avoided in most cases this way? Just find a younger person to bring a claim. That can't be the law, can it?
Finally, wasn't the 2003 district court decision finding no disparagement on a different record an appeal where that court, like this one, used the same de novo review standard?


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