Posts Tagged: "washington redskins"

As previously reported, Washington, D.C.’s professional football team announced recently that it has decided to retire the “Redskins” name and logo. In surveys throughout the Washington, D.C. metro area, three possible replacement names have emerged as favorites among the fans: Warriors, Red Wolves, and Redtails. Armed with the knowledge of the name change and the relative popularity of the possible replacement names, two enterprising individuals have applied to obtain a federal trademark registration for the marks WARRIORS, WASHINGTON RED WOLVES, and WASHINGTON REDTAILS, respectively. Neither applicant appears to be connected to the owners of the Washington D.C. professional football team.

After decades of legal battles in which they ultimately succeeded in maintaining the legal right to federal trademark registration of the “REDSKINS” moniker—through the separate efforts of an Asian band by the name of “The Slants”—Washington, D.C.’s National Football League (NFL) team finally succumbed to pressure to change their name. Faced with the immediate prospect of losing $45 million from a stadium naming rights deal with Federal Express, on July 13, 2020, the team announced it would have a new name and logo. Still to come: the new name and logo.

Recent controversy surrounding Kim Kardashian’s truncated move to trademark the term “Kimono” for her new line of undergarment shapewear has subsided, with Kardashian formally announcing that she is abandoning the effort. Kardashian explained the mark as serving the dual purposes of being a play on her name and showing respect for the Japanese culture. In fact, Kimono is Japanese for a traditional long, baggy garment that has been worn by Japanese women for centuries. Kardashian’s effort caused an uproar among the Japanese community in Japan and here in the United States. The community accused Kardashian of trying to exploit a centuries-old Japanese tradition for commercial gain. The controversy prompted the mayor of Kyoto to write a letter to Kardashian, in which he noted the sensitivity of the Japanese people to her move and urged her to drop the effort. Although the immediate controversy has now subsided, Kardashian’s truncated effort has renewed debate around the larger issue of “cultural appropriation” and its intersection with trademark law.

Many other related issues remain ripe for consideration in Brunetti and future cases. Most significantly, are trademarks considered “commercial speech?”  If so, laws relating to trademarks might be subject to relaxed scrutiny for constitutional compliance rather than strict scrutiny… While Tam settled some issues related to The Slants, the Washington Redskins, and D*kes on Bikes, the decision’s full impact remains to be seen.  Brunetti seems to be a promising avenue for the Supreme Court to address some of the tangential issues left open by the Tam decision.

A little more than one year ago, the U.S. Supreme Court struck down the Lanham Act’s disparagement clause as unconstitutional in Matal v. Tam, 137 S. Ct. 1744 (June 19, 2017).  While Tam settled some issues related to The Slants, the Washington Redskins, and D*kes on Bikes, the decision’s full impact remains to be seen. Issues remain ripe for future consideration. Most significantly, are trademarks considered “commercial speech?”  If so, laws relating to trademarks might be subject to relaxed scrutiny for constitutional compliance rather than strict scrutiny.

The USPTO issued Examination Guide 01-17 on Monday, June 26, 2017, entitled “Examination Guidance for Section 2(a)’s Disparagement Provision after Matal v. Tam and Examination for Compliance with Section 2(a)’s Scandalousness Provision While Constitutionality Remains in Question.” This Guide explains how trademark applications with arguably disparaging or scandalous content will be examined in the aftermath of the Supreme Court’s decision in Matal… The Supreme Court’s ruling in Matal cleared the way for a slew of new and possibly offensive trademark applications of a kind that have been consistently denied since 1946. Whether this protection will be extended to a wider category of potentially incendiary marks hinges on the Federal Court’s pending review of Brunetti.

The Supreme Court ruled that the anti-disparagement clause in the Lanham Act violates the Free Speech Clause in the First Amendment. Matal v. Tam. As a result, the United States Patent and Trademark Office may no longer deny registration of a federal trademark application on the ground of disparagement. Several states, including Massachusetts and New Hampshire, have anti-disparagement trademark provisions that will no longer be enforceable either… The statute does not define ‘scandalous’, but like the restriction against disparaging marks, the courts and the PTO focus on whether a mark is offensive.

After a streak of six patent decisions uniformly overruling the Federal Circuit, and for the first time all term, the Supreme Court finally handed the Federal Circuit a win this week. In its landmark ruling in Matal v. Tam (formerly Lee v. Tam), the U.S. Supreme Court struck down the restriction on the registration of marks that “disparage” under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). Justice Samuel A. Alito Jr. wrote unanimously for the eight justices in holding that Section 2(a)’s prohibition on disparaging registrations violates “a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

Lauren Emerson, Baker Botts, LLP: “Today’s decision, while not surprising, is momentous, as any decision striking a longstanding legislative provision based on freedom of speech would be.  From a trademark practitioner’s perspective, Matal v. Tam is also remarkable in that it is the second decision in just over two years in which the Supreme Court specifically has taken note of the importance and value of trademark registration.   The decision has drawn additional attention as it undoubtedly marks the end of Pro-Football, Inc. (“PFI”)’s longstanding battle over its REDSKINS marks, as 2(a) will no longer bar registration of those marks either.   I have little doubt that in the weeks and months to come, we will see many new filings that will be more challenging to celebrate than Simon Tam’s hard-won victory.”

The Supreme Court heard oral argument on the cloudy Wednesday morning of January 18, 2017. Although the Justices posed tough questions and intricate hypotheticals to both sides, the tone of each Justice’s questions and their individual jurisprudences indicate an even 4-4 split, with Justices Breyer, Ginsberg, Kagan, and Sotomayor favoring the USPTO, and Justices Alito, Kennedy, Thomas, and Chief Justice Roberts favoring Tam. Of course, oral argument is often shaky, at best, when predicting the outcome of a case, especially one with such potential for a drastic overhaul of a body of law… Although no one can know for certain the outcome of Lee v. Tam, one consequence that appears very likely is that, if the Court does rule in favor Tam, it would strike the entirety of Section 2(a), not just the portion prohibiting disparaging marks that forms the central issue of the case. John C. Connell, counsel for Tam, went so far as to call that result “inevitable” in response to Justice Ginsberg’s question on the topic.

Based on the question presented in Lee v. Tam, the Supreme Court made clear that its grant of review is only as to the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), but the outcome of this case will affect the other types of marks excluded by Section 2(a), such as marks that may be viewed as immoral or scandalous. Indeed, in a footnote in its en banc decision the Federal Circuit “recognized…that other portions of § 2 may likewise constitute government regulation of expression based on message, such as the exclusions of immoral or scandalous marks….”

The U.S. Supreme Court agreed yesterday to review a Federal Circuit ruling that held unconstitutional a law prohibiting registration of trademarks that “may disparage” people or groups. In a case involving an Asian-American dance band’s bid to register its name THE SLANTS as a trademark, the court will consider whether the bar on registering disparaging marks in Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), violates the First Amendment guarantee of free speech. In the meantime, the Court is expected to rule soon on the Washington Redskins’ cert petition in Pro-Football, Inc. v. Blackhorse, No. 15-1874, challenging a decision of the Eastern District of Virginia upholding the PTO’s cancellation of the REDSKINS trademarks under that same provision.

Two cases making their way through the Federal courts may force the Supreme Court to consider the issue of what sorts of trademarks should be considered “disparaging,” and whether the government may lawfully prevent the registration of such trademarks… The Redskins appealed to the Fourth Circuit in August 2015 and the parties’ and amici briefs have been rolling ever since. As of April 25, 2016, the Redskins have petitioned the United States Supreme Court to review their case, skipping over the Fourth Circuit Court of Appeal.

Yesterday the Federal Circuit in an en banc decision held that the portion of Section 2(a) of the Trademark Act, which bars federal registration for trademarks that are disparaging, is unconstitutional under the First Amendment. The government advanced three principal arguments for why §2(a) did not violate the First Amendment: (1) because §2(a) does not “prohibit” or suppress speech at all; (2) because trademark registration is government speech; and (3) because §2(a) merely withholds a government subsidy. The Court rejected all three of the government’s arguments, and in doing so issued holdings on three separate issues that have divided other tribunals.