A few weeks ago, the trademark dispute involving the Washington Redskins was back in the news again, with a federal district court judge ruling in favor of the cancellation of the “Redskins” word mark registered with the United States Patent and Trademark Office (USPTO). While this ruling does not invalidate all of the Redskins trademark rights per se, as we addressed when we discussed the internal USPTO ruling, it does deprive the Redskins of significant rights associated with its word marks (it’s logos and other marks not including the word “Redskins” are not subject to the decision.) So what does the ruling from the United States District Court for the Eastern District of Virginia in the case of Pro-Football, Inc. v. Amanda Blackhorse, et al. mean, and what can the Redskins do about it?
The Washington Redskins have already indicated they intend to appeal the decision of Judge Gerald Bruce Lee to the United States Court of Appeals for the Fourth Circuit. That decision confronted a lot of deeper legal issues than merely whether the Redskins word mark meets the criteria for cancellation at the USPTO. To qualify for cancellation under the theory proposed by Blackhorse and the other litigants, the USPTO had to find that the word “Redskins” was “disparaging” at the time of its issuance, based on criteria set forth in the United States Code.
This statutory criteria raised other interesting legal issues in the federal court case. The Redskins raised two persuasive reasons why disqualifying “disparaging” marks from registration violate different protections under the United States Constitution. First, the Redskins argued that the First Amendment prohibits viewpoint discrimination where the government provides at least a limited public forum for speech. A prohibition on registering a “disparaging” mark (and the loss of rights associated with it) would constitute such unlawful viewpoint discrimination, according to the Redskins. Second, the Redskins argued that cancellation of the mark, after initial issuance and continued existence, constituted the deprivation of a property right without “just compensation” in violation of the Fifth Amendment.
The federal district court disagreed with both of these arguments. On the First Amendment argument, the court reasoned that the federal trademark registration system is not a public forum of any kind, instead labeling the registration as government speech, relying on the recent U.S. Supreme Court case of Walker v. Texas Division, Sons of Confederate Veterans addressing a state’s decision to refuse to issue Confederate battle flag license plates. On the Fifth Amendment argument, the court reasoned that the Redskins had not lost a property right, since they were still free to claim trademark protection in each state at common law.
The Fourth Circuit will have some weighty issues to address when it hears this case. Whether a registered trademark qualifies as government speech is questionable: the registration system is by definition a system that merely verifies the trademark qualifications of private commercial speech. Moreover, it is hard to see how the federal government has not taken a tangible property interest from the Redskins. While it is true that the cancellation of a registered trademark does not actually deprive someone of a trademark right per se, the deprivation of a registered mark deprives a person of specific, tangible, and valuable rights. As we advise our own clients, common law rights are fuzzy: a common law trademark claimant bears the burden of proving a valid trademark in court, usually is not afforded attorneys’ fees if he prevails, and is not entitled to any kind of statutory or more certain damages. Moreover, a common law trademark claimant has rights only in a reasonable geographic area surrounding the use of the mark, and must deal with the law in 50 states and additional territories, making the enforcement of common law rights much more costly. Federal registration remedies these defects, so as a trademark attorney it is hard to see how depriving a person of these rights is not a taking.
In sum, it will be interesting to see how the Redskins trademark case progresses through the federal court system.
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