The Latest on 'Disparaging' Names, Trademark Rights

District Judge Lee said the evidence ' dictionary definitions, scholarly articles, news reports and statements by Native Americans ' supported the contention that the trademarks “'may disparage' a substantial composite of Native Americans.” But the ruling does not prohibit the team from using the trademarks and the decision does not mean fans can't wear or display those marks, Judge Lee said.''Courts do not create trademarks; only businesses like PFI control their own destiny with respect to how the public discerns the source and origin of PFI's goods and services,' the district judge wrote in his 70-page opinion, referring to Pro-Football Inc., the official business name of the Redskins. 'What actions, if any, PFI takes going forward with the marks are a business judgment beyond the purview of this court's jurisdiction.'

The team filed the lawsuit in the U.S. District Court for the Eastern District of Virginia in August 2014, several weeks after a panel of administrative law judges from the U.S. Patent and Trademark Office cancelled six of the team's federal trademarks. The suit named Native Americans who challenged the trademarks before the patent and trademark board as the defendants.

Jesse Witten of Drinker Biddle & Reath, who represented the Native Americans, said in an e-mail: “The district court sided with us on every point. We introduced evidence that for decades, the National Congress of American Indians and other leading Native American groups and individuals have opposed the team's name. We also introduced dictionary definitions, scholarly articles, newspaper clips and other evidence of how the term 'redskin' has been used over the years.”

Robert Raskopf of Quinn Emanuel Urquhart & Sullivan, who argued for the football team, said they would appeal Judge Lee's ruling on all grounds. Until the judge's order requiring the cancellation of the team's federal trademark registrations takes effect ' which Raskopf doesn't expect to happen until all appeals are exhausted ' the team will continue to enforce its marks, the attorney said.'Raskopf leads Quinn Emanuel's national sports litigation practice.

'After [Judge Lee's] ruling, the Washington Redskins still own their trademarks. The team's ability to use its famous name and enforce its trademark rights are as intact now as they were prior to the ruling,' Raskopf said in a statement. 'The Redskins' rights will be vindicated on appeal and will remain unaffected, as has consistently been the case throughout the 23-year history of this litigation. In the meantime, the Redskins will continue to use their longstanding marks as symbols of pride, achievement and success both on and off the field.'

The team challenged as unconstitutional '2(a) of the Lanham Act, which prohibits the registration of trademarks that “may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

That language was vague and chilled First Amendment-protected speech, the team argued. But Judge Lee wrote that, although the court was cancelling the team's trademarks registration, the team was still free to use those marks. The cancellations did not violate the First Amendment because they “do not burden, restrict, or prohibit PFI's ability to use the marks,” he said.

As for the vagueness argument, Judge Lee said there were multiple dictionary definitions of the term “disparage” that the team could turn to, as well as the Patent and Trademark Office's own written guidance on the issue. Furthermore, he said the team was on notice when it registered the trademarks that the name was offensive to some.

The district judge also found that the government's trademark registration program was “government speech” that was not subject to First Amendment scrutiny. The team could still use the marks, Judge Lee said, but the government had the right to grant or deny federal protection to those marks. He cited the Supreme Court's June ruling in Walker v. Texas Division, Sons of Confederate Veterans, 135 S. Ct. 2239 (2015), in which the justices held that Texas could reject a specialty license plate featuring the Confederate Flag because license plate designs were “government speech.”

Judge Lee's ruling is a victory for the U.S. Department of Justice, which intervened in the case earlier this year to defend the section of federal trademark law that the football team claimed was unconstitutional. A Justice Department spokeswoman said in a statement: “We are pleased by the court's decision affirming the constitutionality of the statute. The Department of Justice will continue to defend the constitutionality of this important provision of the trademark registration law.”

The “Slants” case in the Federal Circuit raises a similar constitutional challenge to the Lanham Act. In June, the Washington Redskins filed a friend-of-the-court brief in support of The Slants' front man Simon Shiao Tam, who filed the trademark registration application for his band. In April 2015, a three-judge Federal Circuit panel upheld a decision by the Trademark Trial and Appeal board to deny the application. In Re: Tam, 785 F.3d 567 (Fed. Cir. 2015).

Federal Circuit Judge Kimberly Moore, writing for the panel, said that the section of federal trademark law in dispute did not violate the First Amendment because the band was free to still use the name. She cited the 1981 appellate precedent from a case called In re McGinley, 660 F.2d 481 (C.C.P.A.). Writing separately from the main opinion, Circuit Judge Moore, said, however, that she thought it was time for the court to revisit the 1981 decision.

“We have yet to be presented with any substantial government interests that would justify the [Patent and Trademark Office's] refusal to register disparaging marks,” Moore wrote. “It is time to revisit the holding in McGinley in light of subsequent developments in the law and the trademark registration funding regime.”

In the football team's amicus brief, Raskopf urged the Federal Circuit to overturn McGinley because its interpretation of the trademark law “no longer has any place in modern First Amendment law.”

The full Federal Circuit in April agreed to reconsider the “Slants” case and has scheduled arguments for Oct. 2.

Zoe Tillman is a Reporter with The National Law Journal, an ALM affiliate of Entertainment Law & Finance. NLJ Staff Reporter Amanda Bronstad contributed to this report.

The Washington Redskins football team has vowed to fight a federal district judge's recent order cancelling the team's federal trademark registrations as likely disparaging to Native Americans. Pro-Football Inc. (PFI) v. Blackhorse, 1:14-cv-01043. The team's planned appeal to the U.S. Court of Appeals for the Fourth Circuit sets up a second showdown in federal appeals courts over the government's ability to cancel or deny trademark registrations based on content. A full sitting of the Federal Circuit ' a court that specializes in patent and trademark issues ' earlier this year agreed to hear a case about the Asian-American dance rock band named “The Slants,” whose trademark registration request was denied as derogatory to people of Asian descent.

The question of how the government reviews such trademark registrations could be headed to the U.S. Supreme Court, especially if the two appeals courts reach different conclusions. The last time the decades-long fight over the Washington football team's name reached the High Court, the justices in 2009 declined to review a ruling that favored the team. Pro-Football Inc. v. Harjo, 565 F.3d 880 (D.C. Cir. 2009).

In July 2015, U.S. District Judge Gerald Bruce Lee in Alexandria, VA, upheld a decision last year by a patent and trademark administrative board that the Redskin trademarks violated federal law under the Lanham Act. The judge denied the football team's constitutional challenge to the section of the Lanham Act that addresses disparaging language.

District Judge Lee said the evidence ' dictionary definitions, scholarly articles, news reports and statements by Native Americans ' supported the contention that the trademarks “'may disparage' a substantial composite of Native Americans.” But the ruling does not prohibit the team from using the trademarks and the decision does not mean fans can't wear or display those marks, Judge Lee said.''Courts do not create trademarks; only businesses like PFI control their own destiny with respect to how the public discerns the source and origin of PFI's goods and services,' the district judge wrote in his 70-page opinion, referring to Pro-Football Inc., the official business name of the Redskins. 'What actions, if any, PFI takes going forward with the marks are a business judgment beyond the purview of this court's jurisdiction.'

The team filed the lawsuit in the U.S. District Court for the Eastern District of Virginia in August 2014, several weeks after a panel of administrative law judges from the U.S. Patent and Trademark Office cancelled six of the team's federal trademarks. The suit named Native Americans who challenged the trademarks before the patent and trademark board as the defendants.

Jesse Witten of Drinker Biddle & Reath, who represented the Native Americans, said in an e-mail: “The district court sided with us on every point. We introduced evidence that for decades, the National Congress of American Indians and other leading Native American groups and individuals have opposed the team's name. We also introduced dictionary definitions, scholarly articles, newspaper clips and other evidence of how the term 'redskin' has been used over the years.”

Robert Raskopf of Quinn Emanuel Urquhart & Sullivan, who argued for the football team, said they would appeal Judge Lee's ruling on all grounds. Until the judge's order requiring the cancellation of the team's federal trademark registrations takes effect ' which Raskopf doesn't expect to happen until all appeals are exhausted ' the team will continue to enforce its marks, the attorney said.'Raskopf leads Quinn Emanuel's national sports litigation practice.

'After [Judge Lee's] ruling, the Washington Redskins still own their trademarks. The team's ability to use its famous name and enforce its trademark rights are as intact now as they were prior to the ruling,' Raskopf said in a statement. 'The Redskins' rights will be vindicated on appeal and will remain unaffected, as has consistently been the case throughout the 23-year history of this litigation. In the meantime, the Redskins will continue to use their longstanding marks as symbols of pride, achievement and success both on and off the field.'

The team challenged as unconstitutional '2(a) of the Lanham Act, which prohibits the registration of trademarks that “may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

That language was vague and chilled First Amendment-protected speech, the team argued. But Judge Lee wrote that, although the court was cancelling the team's trademarks registration, the team was still free to use those marks. The cancellations did not violate the First Amendment because they “do not burden, restrict, or prohibit PFI's ability to use the marks,” he said.

As for the vagueness argument, Judge Lee said there were multiple dictionary definitions of the term “disparage” that the team could turn to, as well as the Patent and Trademark Office's own written guidance on the issue. Furthermore, he said the team was on notice when it registered the trademarks that the name was offensive to some.

The district judge also found that the government's trademark registration program was “government speech” that was not subject to First Amendment scrutiny. The team could still use the marks, Judge Lee said, but the government had the right to grant or deny federal protection to those marks. He cited the Supreme Court's June ruling in Walker v. Texas Division, Sons of Confederate Veterans, 135 S. Ct. 2239 (2015), in which the justices held that Texas could reject a specialty license plate featuring the Confederate Flag because license plate designs were “government speech.”

Judge Lee's ruling is a victory for the U.S. Department of Justice, which intervened in the case earlier this year to defend the section of federal trademark law that the football team claimed was unconstitutional. A Justice Department spokeswoman said in a statement: “We are pleased by the court's decision affirming the constitutionality of the statute. The Department of Justice will continue to defend the constitutionality of this important provision of the trademark registration law.”

The “Slants” case in the Federal Circuit raises a similar constitutional challenge to the Lanham Act. In June, the Washington Redskins filed a friend-of-the-court brief in support of The Slants' front man Simon Shiao Tam, who filed the trademark registration application for his band. In April 2015, a three-judge Federal Circuit panel upheld a decision by the Trademark Trial and Appeal board to deny the application. In Re: Tam, 785 F.3d 567 (Fed. Cir. 2015).

Federal Circuit Judge Kimberly Moore, writing for the panel, said that the section of federal trademark law in dispute did not violate the First Amendment because the band was free to still use the name. She cited the 1981 appellate precedent from a case called In re McGinley, 660 F.2d 481 (C.C.P.A.). Writing separately from the main opinion, Circuit Judge Moore, said, however, that she thought it was time for the court to revisit the 1981 decision.

“We have yet to be presented with any substantial government interests that would justify the [Patent and Trademark Office's] refusal to register disparaging marks,” Moore wrote. “It is time to revisit the holding in McGinley in light of subsequent developments in the law and the trademark registration funding regime.”

In the football team's amicus brief, Raskopf urged the Federal Circuit to overturn McGinley because its interpretation of the trademark law “no longer has any place in modern First Amendment law.”

The full Federal Circuit in April agreed to reconsider the “Slants” case and has scheduled arguments for Oct. 2.

Zoe Tillman is a Reporter with The National Law Journal, an ALM affiliate of Entertainment Law & Finance. NLJ Staff Reporter Amanda Bronstad contributed to this report.