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The Federal Circuit and Fifth Circuit have both held that refusal by the Patent & Trademark Office (PTO) to register an applicant's mark does not infringe upon the mark owner's First Amendment rights as no conduct is proscribed and no tangible form of expression is suppressed. Nothing about 15 U.S.C.S. § 1052(a) impedes the ability of members of society to discuss a trademark that was not registered by the PTO. Simply put, cancelling the registrations of Marks under Section 2(a) of the Lanham Act, 15 U.S.C.S. § 1052(a), does not implicate the First Amendment as the cancellations do not burden, restrict, or prohibit the owner's ability to use the marks.
Plaintiff Pro-Football, Inc. ("PFI"), Defendants Amanda Blackhorse, Marcus Briggs-Cloud, Phillip Gover, Jillian Pappan, and Courtney Tsotigh ("Blackhorse Defendants"), and the United States of America filed cross-motions for summary judgment on PFI's claims challenging the constitutionality of Section 2(a) of the Lanham Act. Blackhorse Defendants and PFI filed cross-motions for summary judgment on PFI's claims contesting the Trademark Trial and Appeal Board's ("TTAB") Order cancelling the registrations of six of PFI's trademarks on the grounds that they consisted of matter that "may disparage" Native Americans and bring them into contempt or disrepute, and that the defense of laches does not bar the claims (Counts I, II, and VII) (Docs. 69 and 79). This case concerns Blackhorse Defendants' petition to cancel the registration of six trademarks owned by PFI on the grounds that the marks consisted of matter that "may disparage" a substantial composite of Native Americans and bring them into contempt or disrepute under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), at the time of their registrations (1967, 1974, 1978, and 1990).
Did the Lanham Act, 15 U.S.C.S. § 1052(a), implicate the First Amendment?
The court held that the Lanham Act, 15 U.S.C.S. § 1052(a), does not implicate the First Amendment because ability to use unregistered mark is unaffected. Federal trademark registration program is government speech and therefore exempt from First Amendment scrutiny because all Walker factors weigh in favor of government speech and mixed/hybrid speech test is met. 15 U.S.C.S. § 1052(a) is not void for vagueness because it is not unconstitutional in all of its applications, it gives fair warning of what conduct is prohibited, it does not authorize or encourage arbitrary and discriminatory enforcement, and it was not impermissibly vague as applied to plaintiff. Plaintiff's "may disparage" claim was without merit because de novo review of entire record showed that Redskins marks consisted of matter that "may disparage" a substantial composite of Native Americans during relevant time period.