It is generally accepted in this day and age that “Redskins” is considered a disparaging or offensive term for a person of Native American descent. However, whether the government gets to decide if a sports team, or any other entity, can use such a disparaging term to represent its brand is another question. The U.S. District Court for the Eastern District of Virginia answered that question yesterday with a resounding “yes” in its decision in Pro Football Inc. v. Amanda Blackhorse (“Blackhorse”).
At issue in the Blackhorse case were the federal registrations of six trademarks owned by Pro Football, Inc. (“PFI”) containing the term “REDSKINS.” In June of 2014, the Trademark Trial and Appeal Board ruled that the REDSKINS registrations should be cancelled under Section 2(a) of the Lanham Act, 15 U.S.C. §1052(a), which bars the registration of a designation that consists of or comprises matter which, with regard to persons, institutions, beliefs, or national symbols, does any of the following: (1) disparages them, (2) falsely suggests a connection with them, (3) brings them into contempt, or (4) brings them into disrepute. PFI appealed that decision to the District Court, which affirmed the TTAB ruling and ordered the cancellation of the REDSKINS registrations.
The heart of PFI’s appeal was that Section 2(a) of the Lanham Act is an unconstitutional, content-based, infringement on free speech. PFI also argued that Section 2(a) is unconstitutionally vague and a taking of private property. The District Court rejected each of these arguments.
In rejecting PFI’s First Amendment claims, the District Court made a point of distinguishing between the “use” of a trademark, which is a common law right not granted by federal law, and the “registration” of a trademark, which is governed by the Lanham Act. The Court held that, because a rejection or cancellation based on Section 2(a) of the Lanham Act merely prevents registration of a mark, but not use of a mark, the First Amendment is not implicated.
In its second point rejecting PFI’s First Amendment claim, the Court relied on the recent Supreme Court case, Walker v. Texas Div., Sons of Confederate Veterans, to support its position that the federal trademark registration program, like the specialty license program at issue in Walker, is government speech, which is not subject to First Amendment scrutiny.
The Court also rejected PFI’s other constitutional claims finding that, because the USPTO provides guidelines for determining what is prohibited by Section 2(a), the statute is not vague (despite the fact that there is inconsistency among marks currently on the federal register), and although there may be a property right in a trademark, there is no property right in a trademark registration, so the takings clause is inapplicable.
This decision follows closely on the heels of a decision by the Federal Circuit in which, despite finding that the mark THE SLANTS was disparaging and unregistrable under the current case law, Judge Kimberly Ann Moore filed “additional views” arguing that it was time to revisit the constitutionality of Section 2(a) and requesting a poll on whether to consider the decision en banc.
PFI will no doubt appeal the District Court’s decision and it will be interesting to see whether a circuit split on the issue of the constitutionality of Section 2(a) is on the horizon.
The case is Pro-Football Inc v. Amanda Blackhorse et al., U.S. District Court for the Eastern District of Virginia, No. 14-cv-2043.