Scoreboard 2-0: Against the REDSKINS Registrations

The U.S. District Court for the Eastern District of Virginia issued a Memorandum Opinion and Order of July 8, 2015, that essentially affirms the U.S. Patent & Trademark Office Trademark Trial & Appeal ruling that six REDSKINS registrations are to be cancelled. The Court emphasized that the ruling relates to trademark registrations, not the trademarks themselves. As we continue to read stories and hear interviews where the terms are used interchangeably, we hope that others will take note of the differences.

Federal registration provides benefits that are not available at common law. These benefits include, but are not limited to: (i) the ability to use the federal registration symbol with the mark; (ii) constructive notice of registrant’s ownership of the mark; (iii) prima facie evidence of the validity of the mark; (iv) the possibility that the registration will become incontestable after five years; (v) the ability to record the registration with U.S. Customs and Border Protection and request seizure of goods bearing infringing marks; and (vi) the right to institute actions in federal courts without regard to diversity or the amount in controversy. The loss of these and some other benefits are at stake for Pro-Football, Inc.

In June 2014, the U.S. Patent and Trademark Office Trademark Trial & Appeal Board (“TTAB”) determined that at the time of their registration (1967, 1974, 1978 & 1990), the REDSKINS marks that are the subject of the six registrations consisted of matter that “may disparage” a substantial composite of Native Americans and bring them into contempt or disrepute. Blackhorse, et. al v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014).

Pro-Football, Inc. (“Pro-Football”) brought the current action before the U.S. District Court for the Eastern District of Virginia, seeking a de novo review of the TTAB ruling.

Motions for Summary Judgment and Cross Motions for Summary Judgment were filed by the parties, joined by the United States of America, with respect to the Constitutional claims.

The first play (or “issue” as described by the Court):

• Pro-Football challenged the constitutionality of Section 2(a) of the Lanham Act (Counts III-VI) asserting that Section 2(a) violates the First Amendment by restricting protected speech, imposing burdens on trademark owners and conditioning access to federal benefits. In addition, Pro-Football asserted that Section 2(a) is unconstitutionally vague in violation of the Fifth Amendment due to the vague language “may disparage”. Last and apparently least, Pro-Football claimed that Section 2(a) violates the Due Process and Taking Clauses of the Fifth Amendment by depriving Pro-Football of property without due process and constitutes an unconstitutional taking.

Ruling: The Court held that the Lanham Act does not implicate the First Amendment because trademark registrations involve government speech. Because Pro-Football could not show that: (i) Section 2(a) is unconstitutional in all of its applications; (ii) fair warning is provided as to what is meant by “may disparage”; (iii) arbitrary and discriminatory enforcement is not authorized or encouraged, and (iv) Section 2(a) was not impermissibly vague as applied to Pro-Football, the Fifth Amendment Challenge was denied. As for the Due Process and Taking Clause, the Court held that a trademark registration is not property under the Fifth Amendment, so these claims fail as well.

The second play (or “issue” as described by the Court):

• Pro-Football contested the TTAB decision granting the petition to cancel the six REDSKINS registrations asserting that the record does not establish by a preponderance of evidence that a substantial composite of Native Americans believe that the marks consist of matter that “may disparage” them at the time of their registrations and that laches bar the Defendants’ claims.

Ruling: Referring to dictionary evidence; literary, scholarly and media references; and statements of individuals and groups consisting of Native Americans, the Court held that this evidence demonstrates that the mark “may disparage” a substantial composite of Native Americans during the relevant time period. The Court also held that the Defendants did not unreasonably delay in petitioning the TTAB and laches does not apply because a public interest is at stake.

The REDSKINS registrations have been involved in litigation for more than two decades, and it is clear that the game is not over yet as an appeal by Pro-Football, Inc. appears inevitable.