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.
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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.