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by Chris Mackenzie
Last week, the U.S. District Court sitting in Alexandria, Virginia granted what would appear to be a sweeping victory to a group of five Native Americans who have renewed attempts to cancel the federal registrations of certain trademarks owned by Pro-Football, Inc. (“PFI”), the corporate parent of the Washington Redskins. In what has been a decades long legal battle, this ruling represents the first instance in which a federal court has concluded that at least some of the trademarks used by the Washington Redskins “may disparage” Native Americans. However, this ruling represents less of a watershed moment in this controversial matter than one may reasonably assume, due in large part to the intricacies of trademark law.
In last week’s ruling, U.S. District Judge Gerald Bruce Lee granted summary judgment to Amanda Blackhorse and her co-defendants on every single claim in the lawsuit brought against them by PFI, roundly denying PFI’s arguments that last year’s ruling of the Trademark Trial and Appeal Board (“TTAB”) revoking the registration of the Redskins Marks was unconstitutional and violated critical aspects of trademark law. Notably, the Court ruled that the TTAB’s revocation of the Redskins Marks passed constitutional muster because (a) the federal trademark registration program is governmental speech and, as such, is exempt from scrutiny under the First Amendment; and (b) a trademark registration is not considered property under the Fifth Amendment, and therefore its revocation cannot give rise to a claim that PFI was deprived of its property without due process.
Beyond these constitutional issues, the District Court also ruled on the key trademark question underpinning this and previous cases pertaining to the Reskins Marks: whether the Redskins Marks “may disparage” Native Americans, and therefore violate Section 2(a) of the Lanham Act. The Court ruled that indeed they may, citing “(1) dictionary evidence; (2) literary, scholarly, and media references; and (3) statements of individuals and groups in the referenced group” as evidence of the Redskins Marks’ potential for disparagement.
In view of what would appear to be a resounding win for the Blackhorse Defendants and other opponents of the Redskins Marks, a logical follow-up question would be: what will be the immediate impact of this ruling? Will the Redskins be prohibited from using these marks? Will others be able to use them without PFI’s permission? The short answer is ‘No.’ The Redskins trademarks will remain registered with the USPTO until the appeals process is concluded, which could take years, if not decades, to occur. Even if the ruling is upheld, the actual impact on PFI’s right to the exclusive use of the Redskins Marks will be extremely limited.
If history is any indication, no one should expect a final decision on this matter any time soon. Indeed, as the Court highlights in its 70 page opinion, “[t]he registrability of the Redskins Marks has been litigated for over two decades.” Although controversy began to surround the marks nearly as soon as they were registered, the legal wrangling started in earnest in 1992 when a group of Native Americans filed a petition with the USPTO very similar to one at issue today. Then, as now, the petitioners sought to cancel the marks under Section 2(a) of the Lanham Act, arguing that the marks “may disparage” Native Americans.
Seven years after the original 1992 petition was filed, the TTAB ruled in favor of the petitioners, agreeing that the marks “may disparage” Native Americans, and ordered the registrations cancelled. The ruling was appealed, and the District Court reversed, holding that the finding of disparagement was unsubstantiated and the petitioners waited too long to file their claim. The case then meandered through courts for years, and was finally decided in 2009, seventeen years after the filing of the original petition. The registration of the Redskins trademarks was upheld, but only on the relatively limited ground that the claim was time-barred. The matter of whether the marks were disparaging was left for another day and another case. Now, that day and that case have come, and the Court in the Blackhorse case has emphatically ruled that the Redskins Marks “may disparage” Native Americans.
However, bearing this first round of litigation in mind, it is reasonable to forecast a very protracted appeals process following the Court’s most recent opinion in Blackhorse, which could again traverse multiple decades. Meanwhile, in the short term, PFI will have thirty days from the ruling to decide whether to appeal to the Fourth Circuit here in Richmond, and most expect that they will. From there, the case could follow its predecessor in a tour around the lower courts, or it could ultimately move on to the Supreme Court, provided the Justices find the legal issues involved sufficiently compelling to grant certiorari. Considering the constitutional issues at play in this case, a trip to Capitol Hill is certainly within the realm of possibility.
Even if the ruling is upheld, PFI will not lose the ability to use – and enforce – its Redskins trademarks. To the contrary, the only result will be that the marks will lose their registration with the USPTO. This is a distinction that both the TTAB and the District Court have gone to great lengths to highlight, with Judge Lee even going so far as to quote former NBA star Allen Iverson’s well-remembered distinction between ‘practice’ (practice?!) and actual games in order to highlight the difference between the mere revocation of the registration of the marks and the theoretical extinguishment of the marks themselves. If the registration of the Redskins Marks is cancelled, PFI will lose only the legal presumption of ownership of the marks and the presumption that it has the right to enforce them nationwide. Importantly, however, the presumptions afforded by the USPTO are simply shortcuts to establishing and enforcing these trademark rights, and it is a shortcut that is largely no longer needed when it comes to the Redskins Marks because of their long-standing nationwide use.
In other words, PFI will almost certainly maintain its ownership of the Redskins Marks and its right to their exclusive use nationwide, regardless of the ultimate outcome in the Courts. This is because trademark rights do not arise from registration with the USPTO. Instead, trademark protection occurs automatically, as a result of the company’s use of the mark in commerce. Though highly recommended, in most respects registration with the USPTO is a formality, not a necessity. However, as is the case with much of intellectual property law, a thorough understanding of these and other distinctions is critical in order to properly protect one’s intellectual property rights.
In the end, the Court’s ruling will in all likelihood have a relatively limited impact on the PFI’s future use of the Redskin’s Marks. Instead, it is more reflective of a developing line of case law regarding government speech and lines of constitutional demarcation. Nonetheless, the ruling is an important vindication of the TTAB’s decision and the position of Amanda Blackhorse and her co-defendants with respect to the types of marks that are entitled to registration with the USPTO.
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