Over the holiday break the United States Court of Appeals for the Federal Circuit, a specialized appellate court with jurisdiction over certain intellectual property matters, issued a significant ruling concerning the criteria that the United States Patent and Trademark Office (USPTO) may use to decide whether to issue a federal trademark registration. The Lanham Act–the federal law authorizing the issuance of nationwide federal trademarks–excludes from registration eligibility any mark which is “disparaging” to a person or group of people. Many legal experts have wondered how a law that, by its express terms, calls on the government to discriminate based on the viewpoint expressed by a private person can withstand constitutional scrutiny under the First Amendment’s free speech clause. The Federal Circuit has now ruled that it cannot, holding that the “disparagement” clause requiring denial of a trademark registration is unconstitutional.
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?
We have fielded a lot of questions lately on the decision by the United States Patent and Trademark Office (“USPTO”) to cancel the registrations of six marks belonging to the Washington Redskins of the National Football League. The decision came from the USPTO’s Trademark Trial and Appeal Board (“TTAB”) on June 18, 2014, after proceedings between the Redskins’ corporate owner and five Native American plaintiffs (full details from the USPTO here.) Since the USPTO released that decision, we have had several people ask us about the decision and how it affects the validity of the Redskins marks. Here are our answers to common misconceptions about the USPTO decision.