In the wake of the TTAB’s decision last year to cancel a number of federal trademark registrations for the Washington Redskins team name, on the grounds that the marks were disparaging to Native Americans at the time they were issued in violation of section 2(a) of the Lanham Act, Pro-Football, Inc. (“PFI”)—the corporation that owns the Redskins franchise—sought de novo review of that decision in the United States District Court.  Filing a district court action rather than appealing allowed PFI to raise claims that were beyond the powers of the TTAB to address—chiefly that section 2(a) is unconstitutional.

That case, Pro-Football, Inc. v. Blackhorse et al., Civil Action No. 1:14-CV-1043 GBL-IDD (E.D. Va.) is only a few months old but is moving quickly.  PFI has already moved for summary judgment on the constitutional claims, and last week they filed their brief.

It is a curious document.  PFI leads, and spends the first ten pages of argument, with perhaps its weakest points—that cancellation of the registrations “indisputably affects” and “penalizes the use” of PFI’s trademarks, and that cancellation of the registrations would limit PFI’s ability to fully participate in the public debate over whether the term “redskins” is in fact disparaging. PFI’s arguments about penalizing use all related to its ability to enforce its marks, not to use them; and PFI never really explains how cancellation of its trademarks would exclude it from public debate.

It is not until page 15 that PFI introduces its strongest arguments: “Deterrence or suppression of purportedly offensive speech is never a valid substantial government interest.” [Emphasis in original.]  PFI makes a strong case that this is a textbook content-based restriction on speech that cannot withstand First Amendment scrutiny.  PFI follows with a persuasive discussion of how Section 2(a) both on its face and as applied are unconstitutionally vague, since the definition of “may disparage” is inherently subjective and mutable.  This vagueness, according to PFI, has led to a number of inconsistent results, with the PTO having both allowed and denied trademarks featuring controversial terms such as HEEB, INJUN and SQUAW, among others.

The Native Americans who were the original plaintiffs in the TTAB action will be filing their opposition brief shortly.  In the meantime, they have not just been playing defense: they have filed a summary judgment motion of their own, seeking to knock out PFI’s contentions that the Native Americans’ claims are barred by laches.  Laches had defeated the prior attempt by another group of Native American plaintiffs to cancel the Redskins registrations, and the current plaintiff group consists of younger people who only recently came of age.  Thus it will be difficult for PFI to sustain a claim of laches against these particular individual plaintiffs.  Nevertheless, more than once in its brief on the constitutional issues PFI raises the fact that no one had objected to the Redskins trademarks until many years after they were registered, and decades after their first use.

This fascinating case will continue to bear close watching.