Pro Football v. Blackhorse (E.D.Va. 2015)
In an important trademark ruling, E.D. Virginia Judge Gerald Bruce Lee has affirmed the Trademark Trial & Appeal Board’s (TTABs) cancellation of the trademark registrations associated with the Washington Redskins professional football team. The ruling interprets Section 2(a) of the Lanham Act which permits the USPTO to refuse registration of a mark that “consists of or comprises immoral, deceptive, or scandalous matter.” The decision is a win for the challengers on summary judgment, but Pro Football has vowed to appeal.
Meanwhile, the Federal Circuit is already posed to hear another disparaging-mark case en banc. In re Tam involves an Asian-American band attempting to register the self-deprecating mark “Chinks” “Slants” [DC update: Oh my, I’m not used to using these pejoratives and used the wrong one here]
- Read the Blackhorse decision.
- Read about In re Tam.
I wonder whether there is any form of valid non-contradictory conceptualization going on here for one to decide a mark which although “discriminates” (read differentiates, particularizes) does so presumably with pride, is still “immoral” and/or “scandalous”.
Query whether or not a bone fides team desirous of a mark reflecting a minority but with pride would even be permitted to do so in today’s political climate.
Although reference to differences in culture, religion, race, should be ignored when irrelevant, they cannot be denied entirely and when a culture’s identity and pride are considered, far from empowering a minority group, ignoring differences altogether is a form of conceptual genocide… wiping out the group, its legitimacy, its uniqueness,its identity, altogether.
A politician’s identifying the mere differentiation of a minority group e.g. by its uniqueness, from the “white majority” with racism, belies the attitudes of the politician as inherently racist. Only a racist would define pointing out a difference from the norm as such, as racism, because only a racist sees the norm as the ideal.
James Brown had it right in his lyrics, but perhaps today’s politicians are more racist than they think they are…
Nothing in this case has anything to do with “conceptual genocide.”
A politician’s identifying the mere differentiation of a minority group e.g. by its uniqueness, from the “white majority” with racism, belies the attitudes of the politician as inherently racist.
[eye roll]
Please stick to your day job, which is apparently watching way too much TV.
Query whether or not a bone fides team desirous of a mark reflecting a minority but with pride would even be permitted to do so in today’s political climate.
If you think there’s something unique about “today’s political climate” then you must have born yesterday.
That said, any football team is free to call itself “The Proud Native Americans” if it likes. It seems like a silly name to me but, hey, there’s a NFL team named after tiny red bird so maybe — just maybe — the awesomeness of the name doesn’t matter too much at the end of the day.
I was just about to commend you for a substantive comment at 5) and then I run into this – more in line with your typical banality….
Is this where I use that [shrug] thingie?
So, your position is that because the owners and fans of the Washington football are proud of their use of an ethnic slur to identify their product, then it can’t be disparaging?
Why is this important? I see it as a routine application of the rules re disparaging marks. Except for the fact that the mark is particularly prominent, the case seems routine. The Redskins brief reads like a law school blue book, a typical exercise in how many issues you can spot in response to an exam prompt. None of the issues raised were very difficult to refute.
Because it is a First Amendment violation unless the courts apply Confederate Veterans more broadly than any case that has been issued in the last 15 terms.
The football team’s best arguments, I thought, pertained to whether the federal government’s trademark registration program was government speech or private/commercial speech, and whether the trademark registration statute violated the Fifth Amendment’s proscription against vague statutes (a considertion under the due process clause).
The court ackowledges that “a trademark … is commercial speech.” (footnote 6). The mere use of a trademark, however, is distinct from the trademark registration program (the football team remains free to use whatever trademark the league permits).
The court used the factors articulated very recently by the Supremes in Walker v. Sons of Confederate Vets to find that the trademark registration program was government speech. In addition, the court found that the program is Constitutional because, under Rust v. Sullivan (S. Ct. 1991), “the federal government may determine the contents and limits of programs it creates and manages.”
With respect to the government speech analysis per Walker, the court made the following findings:
1) the federal trademark registration program communicates the message that the federal government has approved the trademark
2) the public closely associates federal trademark registration with the federal goverment
3) the federal government exercises editorial control over what is published in the Official Gazette of the PTO and Principle Register.
[Note: the court recognized that one prong of a similar test devised by the 4th Circuit (Sons of Confederate Vets v. Comm’r Va. Dept. Motor. Vehicles weighed in favor of private expression but three other prongs of the test indicated government speech]
The court’s analysis under Rust is straightforward: “Rust stands for the principle that when the govenment creates and manages its own program, it may determine the contents and limits of that program without violating the First Amendment. …. Congress has decided that marks that ‘may disparage’ shall not receieve the benefits of federal registration. It is well within its power to do so.” (pp 26-28).
The football team’s challenge to the Constitutionality of the trademark registration program under the Fifth Amendment was probably its best shot.
The court applied a “relaxed vagueness review standard” because “section 2(a) of the Lanham act does no prohibit speech nor does it impose civil or criminal penalties.” The court further found that the statue was not “facially vague” because the football team “could not possibly demonstrate that every conceivable set of words, symbols or combinations” could be deemed ‘disparaging’ and therefore invalid. Rather, the court found that the term ‘disparage’ provided “fair warning” and, for support, noted that the same term was deemed appropriate for use in a test for the Establishment Clause by the Supreme Court as recently as last year (Town of Greece v. Galloway). The court additionally noted that with respect to the football team’s trademark, the term has been deemed disparaging and offensive for decades, leading the PTO to consistently reject trademarks using the term a dozen times since 1992 (seven applied for by the football team).
There is a lengthy discussion as to whether a “substantial composite” of Native Americans are, in fact, offended by the term. Citing the 2008 TTAB case In re Heeb Media/i>, the court states:
“[W]hether a substantial composite of the referenced group believes that a mark … ‘may disparage’ is not a mathematical equation requiring the parties to argue over whether the evidence shows that a specific threshold was met. Instead courts consider (1) dictionary definitions …; (2) scholarly, literary and media references; (3) statements of individuals or group leaders of the referenced group on the term.” (pp 61-62)
Unsurprisingly, the court’s findings with regard to the “substantial composite” issue supported the PTO’s refusal of the mark.
Lastly, the football team’s laches arguments were dispensed with in a few paragraphs.
Apologies for the formatting error. The last two paragraphs should not be italicized.
If Danny Boy wants to sell more merchandise he can either: 1) win a SuperBowl; or 2) change the team name. As 1) is never going to happen as long as he owns the team, he should give serious consideration to 2).
One might wander over to the mighty Quinn’s for an excellent write-up of the pre-decision matter.
It is a great blog post. But, I still think that these symbols and words need very close scrutiny. We have a history of horrible racism–horrible. Seriously the Europeans tried to commit genocide just 150 years ago right here in the U.S.A. Slavery was only 150 years ago. I think this history has to be taken into account when considering the marks.
“Seriously the Europeans tried to commit genocide just 150 years ago right here in the U.S.A.”
Who specifically tried to genocide in the USA 150 years ago?
The European settlers tried to wipe out the Native Americans.
“The only good Indian is a dead Indian.” Manifest Destiny, etc.
Seriously, given this history shouldn’t we be particularly considerate?
“The European settlers tried to wipe out the Native Americans.”
Yeah sort of but I didn’t realize that was still going on in the 1860’s. But I guess that date is still right around when it would be happening. And also I’m not really sure they tried to “wipe them out”. Certain tribes surely, especially war like tribes. But on the whole I think they were more interested in the land and pushing the indians off the land.
Last I’d heard smallpox (and a few other western diseases) unintentionally wiped out the majority or a huge number of indians before the settlers had to raise a hand in anger.
Some good articles on it though.
link to rationalwiki.org
Who, 6? Well for one, the founder of the Democratic Party. The guy who lead the army into Florida to wipe out the Indians, not just defeat their warriors in a fair fight. The guy who ignored the Supreme Court and ordered the Cherokee onto the trail of tears.
Name the founder of the Democratic Party, Mr. Genocide himself.
Talk about removing the Stars and Bars. We should remove this gentlemen from any honored place in American History.
idk about that bro, I haven’t heard about any genociding by Jackson, but either way but that’s because a lot of the indians in FL were aholes.
^^^ and we are worried about a football team name?
This, from one of two people to ever use** the “N” word on this blog…?
** to be fair, the other person merely defended 6’s use.
Come on 6. You need to grow a bit.
How is this acceptable? Did someone ever confirm whether he is actually an Examiner? I can’t imagine the PTO is okay with him continuing to post on here if there is an impression he is a patent examiner. It just makes the examining corps, and the PTO, look really bad.
But why should the PTO care what you think? Isn’t that the point of the First Amendment, that the government should not tamper in the competition of ideas? The Redskins should be free to call their team what they like, and you should be free not to patronize them. The irony in all of these cases is that if the name really was as offensive as some claim, the Redskins–as a consumer-driven business–would have changed it already.
The Redskins should be free to call their team what they like
They remain free to do that.
The issue is whether the government is Constitutionally required to register an offensive trademark.
ID if the name really was as offensive as some claim, the Redskins–as a consumer-driven business–would have changed it already.
The world is filled with consumers happy to gobble up the most offensive and tasteless products that the average person is capable of imagining.
>>“consists of or comprises immoral, deceptive, or scandalous matter.”
If only it had added becomes and revoke.
But, seriously, what in the world is Washington doing? Change the name of your team already. This is like the Confederate flag. Time to make a change.
The “ch1nks” brings up different issues, but my problem with it would be once it is granted how could it then be used? The PTO would have to monitor how the mark is being used.
You know, I h@te to say it, but when you have people behaving like this, it pretty much validates everything the extreme minorities say. Very divisive not to change the name of your team, and why are you doing this?
Isn’t it “slants”?
Yes, it is The Slants.
Now, if accidentally choosing an even more disparaging racial term over the actual self-deprecating mark stirs up a controversy, that would be kind of helping to prove the board’s point, no?
I think it goes more towards likelihood of confusion than proving that the more is disparaging.
“more” –> “mark”
Comments are closed.