Related to our recent blog post on immoral marks, U.S. trademark law also prohibits registration of trademarks that consist of “matter which may disparage … persons, … institutions, beliefs, or national symbols.” This Section of the Lanham Act is central to the long-running controversy over the name of the well-known professional football team, the Washington “Redskins,” which some critics label as a racial epithet. Although the team name has been in use since 1933 and was first registered in 1976, at a climactic point in the controversy last year the Trademark Trial and Appeal Board (TTAB) ordered those registrations to be cancelled pursuant to this Section. We reported on this decision, in which the TTAB held that “redskins” is a racial slur that was disparaging to “a substantial composite” of Native Americans at the time of registration. Just today, on July 8, a federal judge upheld this decision, not only affirming that the marks violate Section 2(a) of the Lanham Act, but also that Section 2(a) itself does not violate the First Amendment.
The saga over the trademark registrations began when a group of Native American petitioned to cancel the federal registrations for the Washington Redskins’ name. The litigation has continued for over two decades as the case (and a companion case) bounced around the TTAB, the district court, and the D.C. Circuit. Most recently, the owner of the registrations, Pro-Football Inc., appealed last year’s TTAB order cancelling its registrations to the District Court for the Eastern District of Virginia.
In today’s ruling, the District Court held that the Native American challengers met the legal requirements to prove that the marks indeed “may disparage” a substantial composite of Native Americans at the time of their registration. Additionally, the Court addressed the major issue of whether Section 2(a) of the Lanham Act violates the First Amendment by restricting protected speech. The Court held that it did not, because cancelling the federal registrations under Section 2(a) does not implicate the First Amendment, as the cancellations do nothing to burden, restrict or prohibit Pro-Football’s ability to use the marks in commerce. Indeed, a federal registration is not required in order for one to use trademarks in commerce, and thus nothing in Section 2(a) impedes the ability of members of society to discuss unregistered marks. In addition, the Court found that the federal registration program is government speech (as opposed to commercial or private speech) and is thus exempt from First Amendment scrutiny.
The saga is not over, however, until Pro-Football exhausts its appellate options. Even then, assuming today’s decision stands, will the team adopt a new name that is eligible for federal trademark registration? Not likely. Pro-Football can still rely on its long-standing common law rights in the mark, stemming back to its first use in 1933. The only thing the team will lose is its ability to enjoy the benefits of federal registration, including the ability to use the coveted ® symbol.