What Do The Sons Of Confederate Veterans, The Washington 'Redskins,' And An Asian-American Boy Band Have In Common?

Check out the Decision in Pro-Football, Inc. v. Amanda Blackhorse, et al, No. 1:14-cv-01043 (ED Va. July 8, 2015)

The big trademark news, of course, is that a federal judge now has weighed in, ordering the U.S. Patent and Trademark Office to cancel six trademark registrations of Pro-Football, Inc. (the Washington, D.C. NFL team) containing the word “redskins.”

U.S. District Court Judge Gerald Bruce Lee, of the Eastern District of Virginia, ruling on cross motions for summary judgment, rejected all of Pro-Football, Inc. (“PFI”)'s constitutional claims, and affirmed the Trademark Trial and Appeal Board's determination that “redskins” as used by the Washington, D.C. NFL team, “may disparage” Native Americans. Thus, Judge Lee ruled, the six PFI marks containing that term are barred from federal registration under § 2(a) of the Lanham Trademark Act, 15 U.S.C. § 1052(a), and must be cancelled.

Based on the record before him, Judge Lee's decision that “redskins” as used by PFI may disparage Native Americans, is not really remarkable, in terms of well-established law interpreting and applying this statutory provision. However, the Constitutional issues—particularly, the First Amendment issues raised by PFI—would appear to be more complex. Judge Lee's holding that § 2(a) does not implicate the First Amendment rights of PFI rests on three alternative grounds: (1) because PFI remains free to continue to make unfettered use of all of its “redskins” trademarks (and even to sue for infringement under a separate provision of the Lanham Trademark Act applying to unregistered trademarks), § 2(a) does not burden, restrict or inhibit PFI's speech; (2) the federal statutory trademark registration scheme is a government program, and the government may determine the contents and limitations of its programs; and (3) federal trademark registrations constitute government speech.

The latter holding, that a U.S. trademark registration constitutes government speech, is noteworthy; to this author's knowledge, no court has previously so ruled. Just last month, the Supreme Court, in Walker v. Tex. Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015), held that the state of Texas could refuse the Sons of Confederate Veterans' request for a confederate flag vanity license plate, because the license plates are government speech. The Supreme Court found the vanity license plates were government speech because license plates historically communicate messages from...