The Lawletter Vol. 41, No. 2
There has been considerable dispute about the propriety of the continuing use of the mark and name REDSKINS by the Washington NFL franchise. It is claimed by some that the word "redskin" is considered offensive by aboriginal Americans and others. Pro-Football, Inc. v. Blackhorse, 62 F. Supp. 3d 498, 113 U.S.P.Q.2d (BNA) 1749 (E.D. Va. 2014). While that case is on appeal, the Federal Circuit, which hears the bulk of trademark cases, has rendered a decision that could place in doubt whether the cancellation of the REDSKINS trademark by the Trademark Trial and Appeal Board (the "TTAB") can be sustained. See Blackhorse v. Pro-Football, Inc., 111 U.S.P.Q.2d (BNA) 1080 (T.T.A.B. 2014) (Cancellation No. 92046185).
Section 2(a) of the Lanham Trademark Act, 15 U.S.C. § 1052(a), prohibits registration of a trademark that "[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute." In re Tam, No. 2014-1203, 2015 WL 9287035 (Fed. Cir. Dec. 22, 2015), involved the attempted registration by the representative of an Asian-American rock/dance band of its trademark THE SLANTS. The applicant for the mark is himself Asian-American, but the examiner nonetheless refused registration on the basis that the mark was likely disparaging to "persons of Asian descent" within the meaning of section 2(a). The TTAB agreed and sustained the refusal to register the mark.
The applicant argued that the TTAB's decision should be reversed because the refusal to register his mark violated principles of free speech enshrined in the First Amendment. The TTAB had reasoned that the applicant's argument was foreclosed by In re McGinley, 660 F.2d 481, 484, 211 U.S.P.Q. (BNA) 668 (C.C.P.A. 1981) ("With respect to appellant's First Amendment rights, it is clear that the PTO's refusal to register appellant's mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, appellant's First Amendment rights would not be abridged by the refusal to register his mark." (citation omitted)). The Federal Circuit agreed en banc to reconsider its holding in McGinley. A divided panel overruled that case and reversed the decision of the TTAB. The court summarized its holding as follows:
Strict scrutiny is used to review any governmental regulation that burdens private speech based on disapproval of the message conveyed. Section 2(a), which denies important legal rights to private speech on that basis, is such a regulation. It is therefore subject to strict scrutiny. It is undisputed that it cannot survive strict scrutiny.
Tam, 2015 WL 9287035, at *7.
The majority of the panel, plus those judges who concurred, were especially persuaded by the fact that in deciding to register the mark, the Patent & Trademark Office could make its decision depending on whether the examiner approved or disapproved of the message conveyed. If the mark in suit, for example, had portrayed Asian-Americans in a more positive light, then registration presumably would be allowed, all other requirements for registration being present. But because the mark, at least in the examiner's opinion, could be interpreted as being offensive to a particular person or group, then registration should be denied. Two concurring justices agreed that the statute was unconstitutional on its face, but for the additional reason that it was also vague.
The two dissenting judges would have affirmed the denial of registration. Both judges reasoned that because commercial speech was involved, a lesser degree of scrutiny should be applied. Judge Lourie argued that the court should not overturn a settled legal principle without a compelling reason to do so and that the case before it presented no such compelling reason. The applicant could still use the mark, even if registration were refused. Judge Reyna agreed that refusal to register the applicant's mark burdened the applicant's right of free speech, but not to the extent that it outweighed the compelling governmental interest in facilitating the free flow of commerce.
It is submitted that the Fourth Circuit, in reviewing the decision in Blackhorse, will at least take Tam into account and probably will find the reasoning of the majority compelling. The Supreme Court has narrowed the distinction between commercial and other kinds of speech, suggesting that the burden on speech imposed by section 2(a) will be strictly scrutinized. There is a factual distinction between the two cases in that the applicant in Tam was himself an Asian-American, while that is not the case in Blackhorse. That distinction would seem to be of little persuasive effect, however, given the more substantial constitutional issues posed by a statute that, in effect, allows the government to decide whether it approves or disapproves of the content of speech before conferring a benefit that the applicant would otherwise be entitled to receive.