Last week, a federal district court in Alexandria, Va., upheld the U.S. Patent and Trademark Trial and Appeal Board’s cancellation of six trademark registrations held by the Washington Redskins for being disparaging to Native Americans.
Judge Gerald Bruce Lee considered if the name “Redskins” is offensive and whether the trademark registration cancellation violates the team’s First Amendment free speech rights.
Is It Offensive?
Regarding the first matter, the legal issue was not whether the term “Redskins” is viewed as disparaging by Native Americans today, but rather, if it was viewed as such by a “substantial composite” of Native Americans at the time the six Redskins trademarks were issued, from 1967 to 1990.
When plaintiffs brought an almost identical suit in 1992, a judge reversed the Patent and Trademark Board’s trademark registration cancellation because its finding of “disparagement” was not supported by substantial evidence.
During the most recent petition, a dissenting board member highlighted that the plaintiffs engaged in what “can most charitably be characterized as a database dump” resubmitting “most of the same evidence that the [original 1992] petitioners submitted—evidence which the district court previously ruled was insufficient to support an order to cancel the challenged registrations as disparaging.”
Nevertheless, in a 2-1 vote, the board ruled in favor of the plaintiffs, and Lee agreed, holding that there was sufficient evidence to find disparagement.
Turning to the free speech issue, Lee looked at the Supreme Court’s recent decision in Walker v. Sons of Confederate Veterans, which held that Texas did not violate the First Amendment when it rejected a specialty license plate design depicting the Confederate flag because these plates constitute government speech.
Attempting to distinguish Walker from the trademark context, the Redskins’ lawyer argued that trademark recognition does not require the government to embrace the image’s meaning, unlike a license plate which carries the state’s name.
Lee concluded that the trademark registration is in fact government speech because registration conveys the message of government approval, the public “closely associates federal trademark registration” with the government, and the government maintains “editorial control” over the trademark program.
The judge further held that the trademark program does not violate the First Amendment because the government “may determine the contents and limits of programs that it creates and manages,” citing Rust v. Sullivan (1991) and Agency for International Development v. Alliance for Open Society International (2013)—two free speech challenges to conditions attached to federal grant programs.
What Happens Now?
Lee pointed out—quoting NBA player Allen Iverson—that this decision merely cancels the registration of the six Redskins trademarks and that the team may continue to use the trademark, albeit without the full protection that flows from registering the mark.
That’s little consolation for the team, which will be hindered in preventing others from selling merchandise or services that use the “Washington Redskins” name—thereby depriving the business of a valuable property right.
The team may be able to invoke “common law” trademark rights (acquired through the team’s actual use of the mark in commerce) to take legal action against independent merchandisers who use the name for personal profit.
Team owner Dan Snyder—who has fervently defended the team’s name and vowed never to change it—has already declared that the team will appeal the decision to the U.S. Court of Appeals for the 4th Circuit.
The cancellation will not be enforced until the appeals process is complete.