Back in April, my colleague Mike Palmisciano published a blog post noting the decision of the Court of Appeals of the Federal Circuit to rehear In re Tam en banc in order to address the sole issue of whether the bar to registration of disparaging marks in 15 U.S.C. § 1052(a) violates the First Amendment. Mike noted that a decision that Section 2(a) does violate the First Amendment would open the door to registration (or maintenance) of marks such as REDSKINS, KHORAN, and SQUAW VALLEY. Now it appears that Judge Gerald Bruce Lee of the U.S. District Court for the Eastern District of Virginia may have knocked out the First Amendment argument once and for all.

In an opinion issued today, Judge Lee ruled, inter alia, that the Trademark Trial and Appeal Board’s decision to cancel six registrations for Pro-Football, Inc.’s REDSKINS trademarks did not even implicate the First Amendment because: (a) cancellation of the registrations does not prohibit PFI’s use of the “disparaging” trademarks; and (b) the trademark registration program is “government speech” and, therefore, is not subject to the First Amendment. Pro-Football, Inc. v. Blackhorse, et al., Case No. 1:13-cv-01043-GBL-IDD (E.D. Va., July 8, 2015). The opinion is available at http://assets.law360news.com/0676000/676857/Redskins.pdf. (The decision also analyzes PFI’s Fifth Amendment argument, the question of whether the REDSKINS mark is disparaging, and whether the doctrine of laches bars the Blackhorse defendants’ claims, but those issues are outside the scope of this blog post).

In denying PFI’s argument that its trademark registrations were protected speech, Judge Lee distinguished some well-known First Amendment cases cited by PFI. Clatterbuck v. City of Charlottesville, 708 F.3d 549 (4th Cir. 2013) held that a city ordinance prohibiting individuals from begging for money was unconstitutional. The court observed that the ordinance in question in Clatterbuck prohibited actual speech whereas the cancellation of PFI’s registrations did not prevent it from continuing to use the REDSKINS name. The court similarly distinguished Sorrell v. IMS Health Inc., 131 S. Ct. 2653 (2011) (finding unconstitutional a Vermont statute prohibiting, without the prescriber’s consent, pharmacies from selling prescriber-identifying information, pharmacies from disclosing the information for marketing purposes, and pharmaceutical manufacturers from using the information for marketing purposes) and Snyder v. Phelps, 131 S. Ct. 1207 (2011) (reversing jury decision against the Westboro Baptist Church’s picketing of soldiers’ funerals as WBC’s speech was in a public place and on a matter of public concern).

PFI also argued that trademark registrations themselves are “commercial or private speech” subject to First Amendment protection, as opposed to government speech, which is not. The court dismissed the commercial speech argument by noting that proposal of a commercial transaction is the test for identifying commercial speech and that approval of a registration and subsequent publication in the Official Gazette does not propose a commercial transaction and, therefore, is not commercial speech.

Relying extensively on Walker v. Tex. Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015), a case holding that the State of Texas did not violate the plaintiff’s First Amendment rights when it refused to approve a state license plate design bearing the confederate flag, the court found that trademark registration is also government speech. In Walker, the Supreme Court held that license plates are government speech because: (a) “insofar as license plates have conveyed more than state names and vehicle identification numbers, they long have communicated messages from the States”; (b) the public closely identifies license plates and their designs with the state; and (c) license plates are essentially government IDs, and the state maintains direct control over the messages the plates convey.

Judge Lee applied the Walker test as follows: (a) registration communicates that the federal government approved the trademark; (b) the public closely associates trademark registration with the federal government because it associates the ®symbol with the federal government; and (c) the federal government exercises control over the federal registration program. His analysis strikes this writer as somewhat tortured, but he offers additional support for his conclusion via the Fourth Circuit’s Mixed/Hybrid speech test and the Supreme Court’s decision in Rust v. Sullivan, 500 U.S. 173 (1991) (holding that the government may determine the contents and limits of its programs).

While a Virginia federal district court decision is not binding on the Federal Circuit, Judge Lee’s analysis may well be a preview of the conclusions to be reached by that court. For the moment at least, the door to registration of scandalous and smutty trademarks remains closed.