Washington Redskins Must Wait Their Turn for High Court

On October 3, 2016, the U.S. Supreme Court announced that it would not take up an appeal by the Washington Redskins regarding the constitutionality of a Lanham Act provision that prevents registration of trademarks that disparage “persons, living or dead, institutions, beliefs, or national symbols.” See 15 U.S.C. §1052(a).

The Court denied the extraordinary request for “certiorari before judgment” presented by Pro-Football Inc. (“Pro-Football”) – the name of the Washington Redskins’ corporate entity – who sought to join a pending litigation, Lee v. Tam (Case No. 15-1293) regarding the government’s ban on offensive trademarks. Had the U.S. Supreme Court granted the request, it would have allowed Pro-Football to leap directly to the high court even though the Fourth Circuit has yet to rule on the appeal in this case.

Pro-Football petitioned the U.S. Supreme Court five days after the government filed its petition in Lee v. Tam. Both trademark cases deal with the constitutionality of the Lanham Act’s disparagement provision which denies the registrability of disparaging words or symbols as federal trademarks.

In Pro-Football, the Patent and Trademark Office (“USPTO”) cancelled the Washington football team’s several “Redskins” marks citing the disparagement provision of the Lanham Act. As we previously reported, Pro-Football appealed the USPTO decision to the U.S. District Court for the Eastern District of Virginia, asserting that the USPTO’s decision violated the First and Fifth Amendments to the Constitution. Last July, U.S. District Judge Gerald Bruce Lee affirmed the USPTO ruling and ordered cancellation of the Redskins’ marks. Judge Lee agreed with the assessment that the football team’s marks are ineligible for federal trademark protection under the Lanham Act because they are offensive to Native Americans and rejected Pro-Football’s argument that the vast majority of Native Americans had no objection to the name with the trademarks that were granted between 1967 and 1990. Judge Lee also emphasized that his decision does not stop the team from using its name or fans from buying the team’s gear emblazoned with the ineligible mark. The case is currently on appeal at the Fourth Circuit. Oral argument has been calendared for December 9, 2016.

Similarly, in the Tam case, the USPTO turned down a rock band’s application to register a trademark, “THE SLANTS,” as a racist reference to people of Asian ancestry. Last December, the United States Court of Appeals for the Federal Circuit found the Lanham Act’s disparagement provision unconstitutional, stating that while the rejected trademarks “convey hurtful speech that harms members of oft-stigmatized communities,” the First Amendment “protects even hurtful speech.”

In April, the USPTO appealed that ruling and, on September 29, 2016, the U.S. Supreme Court agreed to decide the issue of whether the disparagement provision of the Lanham Act can survive First Amendment scrutiny.

The Supreme Court’s decision means that the Washington Redskins appeal will continue in the Fourth Circuit.

Gibbons will continue to monitor these proceedings and provide updates of future developments.

Paolo A. Strino is a Director in the Gibbons Intellectual Property Department.
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