A federal judge in the Eastern District of Virginia recently upheld the Trademark Trial and Appeal Board’s (TTAB) decision to cancel six trademark registrations held by Pro Football, Inc. related to the Washington Redskins football team. The court agreed with the TTAB’s conclusion that the trademarks are disparaging to Native Americans, one of the grounds for cancellation under the Lanham Act, and also rejected Pro Football, Inc.’s arguments under the First Amendment. While the organization remains free to use the trademarks, if upheld on appeal the cancellation will remove the statutory protections of registration, arguably making the marks more difficult to defend going forward.

Background

As discussed in a previous Arent Fox alert, in June 2014 the TTAB issued an order cancelling six trademark registrations held by Pro Football, Inc. The six trademarks all incorporate the term “REDSKINS.” The TTAB held that the trademarks violated Section 2(a) of the Lanham Act, which bars registration of trademarks that may disparage persons or groups, or bring them into contempt or disrepute. Pro Football, Inc. appealed the order in federal district court, seeking a de novo review of the TTAB’s decision.

The District Court’s Decision

To be disparaging under Section 2(a), a “substantial composite” of Native Americans must have found the REDSKINS trademarks disparaging at the time they were registered. The district court held that the plaintiffs in the TTAB proceeding, a group of Native Americans, offered sufficient evidence of disparagement and granted their motion for summary judgment.  In so holding, the court pointed to dictionary definitions of “redskin” as well as scholarly articles that describe the term as having a disparaging meaning. The court also relied upon statements made by Native Americans claiming that the term had a negative connotation during the relevant time period.

In addition to upholding the TTAB’s decision on the disparagement question, the court also rejected Pro Football Inc.’s claim that Section 2(a) of the Lanham Act is unconstitutional under the First Amendment. The organization claimed that the law burdened its free speech rights by authorizing cancellation of the REDSKINS registrations based on the content of the marks. The court disagreed, finding that the registration or cancellation of a trademark does not implicate the trademark owner’s speech rights. “Simply put,” the Court held, “cancelling the registrations of the Redskins Marks … does not implicate the First Amendment as the cancellations do not burden, restrict, or prohibit [Pro Football Inc.’s] ability to use the marks.” Rather than a restriction on private speech, the court held that the choice of whether to register a trademark isgovernment speech, which is exempt from First Amendment scrutiny.  The court relied upon the Supreme Court’s recent government speech decision in Walker v. Texas Div., Sons of the Confederacy, in which it held that states may refuse to issue specialty license plates based on the content of the plates. By registering (or refusing to register) a trademark, the judge held, the federal government is “merely exercising its editorial discretion over what is published in the Official Gazette of the PTO and the Principal Register.”

The Impact of the Decision

The Redskins released a statement that the organization will appeal the court’s decision, so this matter is far from over. Furthermore, the cancellation of a federal trademark registration does not prohibit the owner from using or claiming ownership of the trademark. Given the longstanding use of the REDSKINS trademarks and the national prominence of the Washington Redskins football team, Pro Football, Inc. should be able to continue asserting nationwide, common law trademark rights. Nonetheless, cancellation carries significant consequences. For example, while Pro Football, Inc. may still seek to enforce its common law trademark rights, the organization loses the nationwide presumption of ownership that comes with registration (instead it would need to prove nationwide rights in court). In addition, proof of registration serves as valuable evidence of the validity of the mark for the goods and services listed in the registration, a benefit that the organization will no longer enjoy. Finally, the organization will not be eligible for certain treble and statutory damages the Lanham Act makes available to litigants with registered trademarks.