Federal And Fourth Circuits To Rule On Constitutionality Of Lanham Act's Prohibition On Registration Of Disparaging Marks

As several of our newsletters have chronicled, the constitutionality of Section 2(a) of the Lanham Act and, in particular, its prohibition on the registration of marks that "may disparage," has been fertile ground for litigation. Most recently, the Eastern District of Virginia affirmed the provision's constitutionality in Pro-Football, Inc. v. Blackhorse, and that decision is on appeal to the Fourth Circuit. In addition, the en banc Federal Circuit recently heard oral argument on the same issue in In re Tam.

Potentially key to both appeals is the Supreme Court's recent decision in Walker v. Texas Division, Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015). In Walker, the Supreme Court, in a 5-4 decision authored by Justice Breyer, held that in its specialty license plate system, Texas was "entitled to refuse to issue plates featuring [a] proposed design" incorporating the Confederate battle flag. The Court held that the plate design constituted "government speech"—"that the message . . . [is] conveyed on behalf of the government"—and that "Texas was consequently entitled to refuse to issue plates featuring SCV's proposed design." The Court reasoned that the state could constitutionally refuse to authorize specialty license plates for a group because license plates had long communicated messages from the state, the public closely associated state license plate designs with the state, and the state maintained "direct control" over the message conveyed on the plate and had actively exercised its authority in rejecting designs.

Pro- Football, Inc. v. Blackhorse, No. 1:14-cv- 01043-GBL- IDD, 2015 WL 4096277, 2015 U.S. Dist. LEXIS 89932 (E.D. Va. July 8, 2015)

In our Summer 2014 issue we analyzed the implications of the Trademark Trial and Appeal Board's (TTAB) cancellation of Pro- Football, Inc.'s (PFI) "Redskins" trademarks, Blackhorse v. Pro-Football, Inc., 2014 WL 2757516 (T.T.A.B. 2014), noting that PFI had opted not to appeal to the Court of Appeals for the Federal Circuit, but rather to seek to overturn the ruling in the Eastern District of Virginia based on a de novo review. In July, the district court affirmed the TTAB's decision. In granting Blackhorse summary judgment, the court emphasized that although federal trademark registration provides many benefits, the PTO's cancellation was limited to the federal trademark registration and did not affect PFI's ability to use the marks or to enforce the marks under common law. The...