Patent & Trademark Office cancels several Washington Redskins trademarks

I’ve got to run right now, but I thought I’d note this, and point to the 2-to-1 decision, Blackhorse v. Pro Football, Inc. (USPTO TTAB June 18, 2014). A quick excerpt:

[T]hese registrations must be cancelled because they were disparaging to Native Americans at the respective times they were registered, in violation of Section 2(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a) [which bars, in relevant part, registrations of marks that “may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”]. This decision concerns only the statutory right to registration under Section 2(a). We lack statutory authority to issue rulings concerning the right to use trademarks.

The last two sentences are important: Even if the decision holds up on appeal (and I don’t know whether it will), the Redskins remain free to use those marks, and even sue over unauthorized use of the marks by others [but note UPDATE below]; they just don’t get the special protections against such uses by others that are offered by statutory registration. To quote the Patent & Trademark Office fact sheet on the case, those lost protections include:

  • “the legal presumptions of ownership and of a nationwide scope of rights in these trademarks” (though I think the Redskins would likely prevail against those who sell unauthorized Redskins gear even without the benefit of these presumptions);
  • “the ability to use the federal registration [R-in-a-circle] symbol,” and;
  • “the ability to record the registrations with the U.S. Customs and Border Patrol Service so as to block the importation of infringing or counterfeit foreign goods.”

[UPDATE: It turns out that at least some cases suggest that, if a mark is found not to be protectable — including because it’s disparaging — then the owner of the mark cannot use federal trademark law to prevent unauthorized use of the mark by others. See In re Tam (Moore, J.), pp. 7-8; the cases cited in that opinion for this proposition don’t squarely discuss marks that are unregistrable because they are disparaging, but the cases can indeed be read as denying all federal protection for such marks, and not just the special protection offered by statutory registration.

On the other hand, the PTO document I cited above pretty strongly suggests that some federal protection would indeed be available despite the cancellation: “Losing the federal registration of a trademark does not necessarily mean that the owner loses all legal rights in the mark. This is because trademark rights in the United States come from use of a mark on or in conjunction with goods or services, not merely from the additional, optional step of federal registration.” And in any event, the loss of registration does not prevent the owner of the mark from using the mark, or (I think) from filing lawsuits under state unfair competition statutes for unauthorized use of the mark, even if it prevents federal lawsuits based on unauthorized use (and thus sharply diminishes the value of the mark).]

For another recent case holding that a trademark can’t be registered because it’s disparaging, see this post about the appellate decision in In re Geller & Spencer. Here are my quick thoughts from that post on the First Amendment questions raised by all this:

My tentative view is that the general exclusion of marks that disparage persons, institutions, beliefs, or national symbols should be seen as unconstitutional. Trademark registration, I think, is a government benefit program open to a wide array of speakers with little quality judgment. Like other such programs (such as broadly available funding programs, tax exemptions, or access to government property), it should be seen as a form of “limited public forum,” in which the government may impose content-based limits but not viewpoint-based ones. An exclusion of marks that disparage groups while allowing marks that praise those groups strikes me as viewpoint discrimination. But I’m not sure that courts will ultimately see this my way; so far they haven’t been inclined to do so, precisely because the exclusion of a mark from federal registration leaves people entirely free to use the mark.

Eugene Volokh teaches free speech law, religious freedom law, church-state relations law, a First Amendment Amicus Brief Clinic, and tort law, at UCLA School of Law, where he has also often taught copyright law, criminal law, and a seminar on firearms regulation policy.

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Ilya Somin · June 18, 2014