Did the USPTO Just Right a Social Wrong, Or Abridge Free Speech?

redskins-logo

By: Brian J. Meli

The Washington Redskins football team is back in the news, but not for their astute draft day maneuverings or the buzz surrounding the start of training camp. This particular story is not a new one either—not by a long shot. In fact, it’s been the source of public debate since well before the team’s current crop of rookies were even born.

Once again, it’s the team’s name that’s grabbing headlines: Redskins. Racial slur? Or proud nickname? By canceling six different federal REDSKINS trademark registrations on the grounds that they disparage Native Americans, the United States Patent and Trademark Office (USPTO) made it clear today where they stand. Whichever side you come down on, this debate is now squarely on the front page again. And this time around there’s every indication it’s going to be there for a while, with everyone from the President of the United States to Bob Costas weighing in.

The team’s owner, Dan Snyder, is steadfast in his position that the team will never change its name on his watch, so much so that he’s gone on record telling reporters to print the word NEVER in caps. His confidence stems from the fact he knows he can’t legally be forced to change the name. But a group of Native American student advocates, led by a Navajo woman from Arizona named Amanda Blackhorse, are doing everything in their power to compel Snyder to have a change of heart by eliminating the legal protections that make the Redskin’s name and attendant brand so valuable. In other words, by getting the Redskin’s six federal trademarks registered with the USPTO cancelled on the grounds that they disparage a significant population of Native Americans, they are attempting to force Snyder’s hand.

Now that their longstanding Petition for Cancellation has been successful, it appears they’ve had their first breakthrough.

Their end game is to diminish the franchise’s ability to prevent others from using the REDSKINS mark to identify their goods and services, making it financially impractical for the team to continue pulling in its relative share of the roughly $3 billion a year generated by the NFL in merchandise licensing. So in effect, in perhaps one of the more ironic twists you’re likely to come, Blackhorse’s group hopes to make the word “Redskin” more commercially available to the public in general so that they might render it less economically viable to the football franchise in particular.

A blueprint for cancellation 

It’s an interesting strategy, but one that has been tried before without much success. Back in 1999 a Native American group seemed to have succeeded in doing what Blackhorse and her group are trying to accomplish. They got the USPTO’s Trademark Trial and Review Board (TTAB) to cancel the Redskin’s marks on the basis that they were disparaging. However the rights holder brought suit in U.S. District Court in a case known as Pro-Football-Inc. v. Harjo, and ultimately they were able to get the TTAB’s decision overturned and their registrations reinstated. While unsuccessful, the Harjo case nonetheless provided a clear blueprint for the Blackhorse petitioners; one they have been painstakingly following ever since.

Then, as now, the Harjo plaintiffs relied on an argument based in Section 2(a) of the Lanham Act, from which the USPTO draws its authority to refuse or cancel registrations that “consist of or comprise immoral, deceptive or scandalous matter … or disparage persons living or dead, institutions, beliefs or national symbols, or bring them into contempt or disrepute.” While many claim that Section 2(a) of the Lanham Act is unconstitutional and violates the First Amendment by elevating the USPTO to the role of arbiters of good taste, that issue was never decided in Harjo, because the defendants failed to overcome two preliminary issues, one procedural and the other evidentiary.

The procedural hurdle dealt with the equitable defense of laches, or the failure to timely bring a claim. The court found that because the first of the Redskin’s trademarks had been registered all the way back in 1967, by waiting until 1992 to bring the cancellation action—eight years after the youngest in the group had reached the age of majority—the group was time-barred from doing so. That error wasn’t repeated this time around because the parties bringing this cancellation action, including Blackhorse herself, were recruited specifically because of their young ages.

Laches may not be a problem this time, but there’s another potentially fatal stumbling block on the path to cancellation, which the Blackhorse petitioners will have to overcome on appeal. That’s the requirement that they produce evidence showing that the marks are, or more accurately were disparaging. The past tense is deliberate, because it’s a crucial point. Blackhorse has to do more than simply show the marks are considered disparaging by today’s standards—a comparatively easier task—but that they were disparaging when registration was actually granted. In other words, they need to produce evidence showing that from 1967 to 1990, the period during which the six registrations were granted, a substantial amount of Native Americans found them disparaging. A tall order indeed, since it was a burden that the Harjo petitioners failed to carry back in the early nineties, when doing so would seemingly have much been easier. They seem to have convinced the TTAB that they’ve done so, with Administrative Trademark Judge Karen Kuhlke noting in her opinion that “the record establishes that, at a minimum, approximately thirty percent of Native Americans found the term ‘Redskins’ used in connection with respondent’s services to be disparaging at all times including 1967, 1972, 1974, 1978 and 1990 … thirty percent is without doubt a substantial composite and to determine otherwise means it is acceptable to subject to disparagement 1 out of every 3 individuals.” 

Convincing a district court however—the likely next stop in this case—will be another matter entirely. That’s because all indications are that the petitioners have introduced scant new evidence above and beyond what the district court already reviewed, and rejected, in Harjo.

The second quarter or the fourth?

And so the Blackhorse petitioner’s apparent victory may be short-lived—avoiding the laches issue and successfully turning back the evidentiary clock for now, but perhaps not permanently. It’s a victory for sure, but one that may only mark the end of the first half, not the game. Throughout the course of any appeal the franchise will retain its rights in the REDSKINS marks, and a team spokesperson has already indicated they will challenge the ruling in federal court, just as they did last time. If that’s the case, a direct constitutional challenge to the power of the USPTO—something Harjo stopped short of—would likely be a part of that challenge. And the First Amendment may in fact prove to be a hurdle too large for any petitioner to overcome should a federal judge read Section 2(a) as being incompatible with the Constitution.

It’s well settled that the government cannot prohibit non-deceptive commercial speech, even speech that’s racist, sexist or anti-religious, without having a substantial interest in doing so. And while the USPTO would argue that they are not prohibiting speech, but merely refusing to grant it special treatment in the form of a registration, there is still the compelling argument that the acceptableness of commercial speech should not be decided by USPTO trademark examiners operating independently and applying often inconsistent standards. If REDSKINS can be cancelled for disparaging Native Americans, for example, then why not HOOTERS for disparaging women? Or CANUCKS for disparaging French Canadians? If the Redskins do launch a constitutional challenge they will certainly point out the excessive degree of inconsistency in this ruling, and the unwieldy policy slope that it invites.

How much does a cancellation really matter?

Perhaps lost in all the legal strategizing and procedural gamesmanship is the larger issue of whether the USPTO is the best venue for carrying out this type of social crusade. Even if the Blackhorse advocacy group manages to weather an eventual First Amendment challenge to the breadth of the USPTO’s authority, and it gets the six REDSKINS registrations permanently cancelled, does that necessarily mean they will achieve their stated goal of a name change?  

Perhaps, but not necessarily.

Even without a federal registration the Redskins would unquestionably continue to have common law rights in their trademarks by virtue of having used them in commerce for as long as they have; rights that could be enforced on the state level. While, as a practical matter, this makes protecting their properties a much harder task by virtue of lost federal efficiencies, it by no means leaves them without any way to protect their brand. And while federal registration is a powerful defense against others claiming to have priority in a mark because it provides prima facie evidence of trademark ownership and a legal presumption in favor of a registrant, contestability isn’t much of an issue for the Redskins, a global sports franchise that has been in existence and using some variation of its trademark in commerce since 1932. While maintaining registrations in foreign jurisdictions would become more onerous for the team, and its registration with the U.S. Customs Service would be in jeopardy, thereby hindering its ability to police illegal imports of counterfeit team gear and apparel, none of these things in and of themselves would likely damage the Redskin’s brand irreparably.

The only thing that could do that would be a major public backlash, and/or boycott of the team; something that would have seemed unthinkable a few years ago, but which seems to now be gaining traction. From that perspective, regardless of what may happen in a court of law from from this point forward, Blackhorse and her fellow petitioners may have already won in the court of public opinion. The question is, when will that win give Mr. Snyder the change of heart they’ve been so persistently seeking?

The content of this blog is intended for informational purposes only. The information provided in this blog is not intended to and does not constitute legal advice, and your use of this blog does not create an attorney-client relationship between you and The Law Firm of Brian J. Meli. Under the rules of certain jurisdictions, the material included in this blog may constitute attorney advertising. Prior results do not guarantee a similar outcome. Every case is different and the results obtained in your case may be different.

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