EDVA Upholds Decision To Cancel Redskins Trademark Registrations — First And Fifth Amendment Challenges To Section 2(a) Still Up For Debate

Eastern District Court Judge Lee upheld the USPTO Trademark Trial and Appeal Board's (TTAB) decision to cancel several REDSKINS trademark registrations. Pro-Football, Inc. v. Amanda Blackhorse et al., No. 1:14-cv-01043-GBL-IDD (E.D. Va. July 8, 2015). Deciding several cross motions for summary judgment, the Court ruled against Pro-Football, Inc., owner of the Redskins football franchise, and in favor of a group of Native Americans who had previously petitioned the USPTO to cancel the registrations. The TTAB held that at the time of registration the marks consisted of matter that may disparage a substantial composite of Native Americans and, therefore, under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), the marks should not be registered. Judge Lee agreed.

Reiterating the difference between a trademark and a trademark registration, interests often conflated, Judge Lee reminded that federal registration does not create trademark rights. Instead, trademark rights are earned at common law by using a mark in commerce. Federal registration does confer additional rights on the trademark owner, including incontestability and proof of ownership, the right to request Customs block importation of infringing goods, treble damages in infringement actions, and other remedies. Judge Lee made very clear: "What is at issue here is the registration of the Redskins Marks and the benefits associated with registration, not use of the marks." Op. at 13.

Pro-Football challenged the constitutionality of Section 2(a) under the First and Fifth Amendments. First, the Court stated that, "[s]imply put, . . . cancelling the registrations of the Redskins Marks . . . does not implicate the First Amendment as the cancellations do not burden, restrict, or prohibit [Pro-Football's] ability to use the marks." Op. at 15. Citing the Supreme Court's recent ruling in Walker v. Tex. Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015) (finding Texas' specialty license plate program is government speech), the Court further found that the federal trademark registration system constitutes government speech, not subject to First Amendment scrutiny.

Interestingly, Judge Moore of the Federal Circuit recently stated the exact opposite in a similar case, In re Simon Shiao Tam, No. 14-1203 (Fed. Cir. Apr. 20, 2015). The PTO refused to register the trademark THE SLANTS, the name of the applicant's Asian-American rock band, under Section 2(a) and the TTAB affirmed the...