DOJ Steps Into Redskins Trademark Lawsuit, Saying It Doesn't Violate First Amendment To Deny 'Disparaging' Trademark
from the constitutional-fights dept
No matter what you think of the various fights over whether or not the Washington NFL professional football team should be named the Redskins, the legal side of the fight is raising a fairly interesting First Amendment question. As we’ve discussed in the past, trademark law (notably 15 USC 1052(a)) says that the Trademark Office has the right to deny a registered trademark on “matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The US Patent and Trademark Office used that tidbit to cancel the registration on the Redskins a few months back (a few months after rejecting a mark on “Washington Redskin Potatoes” using similar logic). Dan Snyder’s football team is going to court over this and raising a few arguments, though the one that is most interesting to me is whether or not that clause in the Lanham Act violates the First Amendment. As the complaint argues:
The terms “disparage,” “may disparage,””contempt,” “disrepute,” and “may bring… into contempt or disrepute”?which the TTAB acknowledges are not defined in the statute or in its legislative history?are unconstitutionally vague. The statutory language of Section 2(a) fails to provide people of ordinary intelligence a reasonable opportunity to understand what conduct it prohibits, and therefore conveys no ascertainable standards for trademark owners to follow. The statutory language of Section 2(a) thereby encourages and authorizes arbitrary and discriminatory enforcement by leaving the Board with virtually unfettered discretion to deny registration or to cancel registrations, even in situations such as the one presented here, where for over eighty years Pro-Football has worked to establish valuable rights in its marks, and has owned its initial registration in the series of marks, for over forty years. Section 2(a) thus effectively chills First Amendment free speech rights.
The terms “disparage,” “may disparage,” “contempt,””disrepute,”and “may bring… into contempt or disrepute” are unconstitutionally overbroad and sweep under their rubrics speech that is not capable of being legitimately regulated by the government. There is no core of easily identifiable and constitutionally proscribable conduct prohibited by Section 2(a). Rather, to the extent there are any legitimate applications of Section 2(a), they are few in comparison to the substantial unconstitutional applications of the law that impermissibly restrict protected speech. Section 2(a) thus chills protected speech that falls within its overbroad language.
The team makes a further argument that the name is a form of protected speech and removing the trademark stifles that speech, but that’s a slightly different issue (and one that I don’t think is as strong).
The DOJ has now stepped in specifically to defend the constitutionality of that section of the Lanham Act:
The United States will defend the constitutionality of the federal statute.
?The Department of Justice is dedicated to defending the constitutionality of the important statute ensuring that trademark issues involving disparaging and derogatory language are dealt with fairly,? said Acting
Assistant Attorney General Joyce R. Branda for the Civil Division. ?I believe strongly in the rights of all Americans to celebrate and maintain their unique cultural heritage. Going forward, we will strive to maintain the ability of the United States Patent and Trademark Office to make its own judgment on these matters, based on clear authorities established by law.?
From a pure legal wonkery position, this whole thing is fascinating. I have to admit that specifically putting into law that the USPTO can deny trademarks based on “matter which may disparage” or which might bring “persons, living or dead, institutions, beliefs, or national symbols… into contempt, or disrepute” bothers me on a basic First Amendment level. Asking bureaucrats to determine whether or not content is disparaging or might bring someone into disrepute certainly seems to raise some First Amendment issues. It certainly doesn’t seem to fall into the very limited categories of “content-based restrictions” that the Supreme Court has allowed.
That, however, is only half of the equation. The more important half is the question of whether denying a trademark registration is a content-based “restriction on speech.” And that doesn’t seem even close to reasonable. There are tons of trademarks that are denied all the time, and it seems perfectly reasonable to say that the USPTO can deny a trademark. If it’s somehow argued that denying (or cancelling) a trademark registration can be seen as a First Amendment violation, then would the USPTO be able to reject any trademarks? Or would it always face a First Amendment challenge?
And that brings us to the final point. Cancelling a trademark registration doesn’t actually block any form of speech. The team can still use the name (and could even still claim a common law trademark, allowing it to block most others’ attempts to use the mark anyway — it basically just limits the ability to get monetary damages). In fact, the trademark lawyer for the Redskins, Bob Raskopf, more or less made this point himself in response to the USPTO cancelling the registration, noting (among other things) that:
This ruling ? which of course we will appeal ? simply addresses the team?s federal trademark registrations, and the team will continue to own and be able to protect its marks without the registrations.
He’s right, but it also undermines the First Amendment question raised in the appeal, and more or less makes the DOJ’s case for it on this particular point. If no speech is hindered or stopped by the cancelling of the registration (or a denial of a registration) based on 1052(a) then where is the First Amendment problem? It may be a “content-based” regulation, but it’s not clear that it’s a content-based restriction on speech.
Either way, as a First Amendment issue, it’s an interesting one to watch. Should the Redskins prevail, and the DOJ fail, on this particular point, there could be some other interesting challenges to rejections of trademarks — or even potentially patents or copyrights as well. Saying that rejecting a registered form of intellectual property is a violation of the First Amendment could open the door on a series of troubling legal questions. Still, this isn’t the only case exploring this issue. A case in front of CAFC currently, involving the USPTO rejecting a trademark for the band “The Slants” via this same part of the Lanham Act has opened the door to it being called unconstitutional. At least one judge seems to agree with the Redskins’ take on this:
At the Federal Circuit, Tam and attorney Ronald Coleman are swimming against 34 years of precedents. But it sounded from Friday’s argument as if at least one judge wants to reconsider them. Judge Kimberly Moore described the seminal decision upholding Section 2(a) of the Lanham Act as outdated, cursory and a candidate for en banc review in light of “an immense evolution of Supreme Court jurisprudence on this point.”
In that case, one of the judges pointed out, as we have, that rejecting the trademark doesn’t limit speech, but in fact expands it by not restricting it via the trademark. After some coaxing from Judge Moore, the lawyer for The Slants’ Simon Tam disagreed with that point. However, again, the others on the panel seem to feel as we do that it’s not clear what speech is being stifled here. According to Judge Kathleen O’Malley:
“Isn’t there a difference, though, between prohibiting speech on the one hand, which very much would be censorship, and refusing to give one a monopoly on a particular mechanism for that speech?”
Indeed, there is. And it seems likely that the Redskins are going to lose on this point as well.
Filed Under: disparaging, doj, first amendment, free speech, lanham act, redskins, slants, trademark
Companies: washington redskins
Comments on “DOJ Steps Into Redskins Trademark Lawsuit, Saying It Doesn't Violate First Amendment To Deny 'Disparaging' Trademark”
Full speed ahead
We may be a government agency, but we do not have to obey any laws we say are not broken, just because!
Sorry, but the idea that something cannot be registered as a trademark just because someone claims it as being offensive is bullshit. The only job the Trademark office has is to evaluate if trade mark is in use by someone else or is being abused. They have no moral authority to stop or deny past or future applications just because the didn’t like it… that is the very nature of Tyranny, YOU ONLY GET WHAT I SAY YOU CAN HAVE!!!
Redskins name has been around for a long time. This is clearly a case of political correctness being use to oppress people just because you don’t like a name.
You want liberty and freedom? Then you have to put up with ass-hats cause they have it too!
Re: Full speed ahead
Do show us where the constitution guarantees you trademark monopoly on anything you want?
Speech or Commerce?
As far as I know, the football team can keep calling themselves the Redskins, they just can’t trademark it. That means they can’t have a monopoly on the name/logo and have the exclusive right to make money off of it. That is very different than saying they can’t call themselves the Redskins.
I think this is an attempt to use free speech laws as an end run around limited monopoly laws. They just don’t like the commercial ramifications of loosing the trademark.
Re: Speech or Commerce?
How are you able to connect “Monopoly or Monopoly Law” to this situation? They are not the ONLY football team in existence selling the ONLY football warez available.
Now if you were talking about the NFL itself… then you might have a case for invoking monopoly things.
Of course they do not like the ramifications… how would you like your multimillion dollar business to lose its Trademark this way?
With your argument… how about if someone tatooed your skin in a bunch of funny colors and then tell you … well you still have your life… you can’t complain… RIGHT!?
The Point is that the Trademark Office is not treating everyone fairly because a few Tyrants now control the place. And if you are okay with that than, then I hope you find yourself in the same situation with someone/something you hold dear! There is no Liberty in this!
Re: Re: Speech or Commerce?
A trademark and a copyright are both forms of limited monopolies. A trademark is a limited monopoly designed to avoid confusion in the marketplace. They have already lost that legal battle. Now they are attempting to misuse freedom of speech laws to regain the commercial benefits of owning the trademark.
Trademark and freedom of speech are two different things, not the same thing. No one is limiting their speech, they are limiting their ability to profit from their speech. Again, two very different things. If they want to keep the name Redskins without owning the trademark they can do that. If they want to change their name to something that they can own the trademark on they can do that. I don’t think that they can re-fight the battle with the Trademark Office, but I could be wrong on that.
But to say that taking away their trademark prevents their speech? That I don’t agree. It has nothing to do with speech and everything to do with commerce.
Re: Re: Re: Speech or Commerce?
Really dood? I have a monopoly on my home address, but its pointless to use that logic to defend a ridiculous position OR to use it as a means to invoke monopoly or monopoly law in connection with registering my home address… get a grip!
The moment a government agency tells someone that they cannot hold a name, trademark, copyright or any right just because that name is offensive to someone is the very model of what free speech is intended to protect. When will you idiots recognizing that playing with language this is way is so damn dishonest?
Trademark and copyright were not intended to be used to control people or organizations via Government on their offensive names until idiots like you came along and decided that “should” now be the case. Anything can be considered controversial… you just seem to only be okay with the loss of rights when it suits your personal desires… that makes you corrupt.
Re: Re: Re:2 Speech or Commerce?
By definition, if the government upholds a companies trademark they restrict everyone BUT that companies free speech. They limit everyone ELSES freedom of expression. Loosing the trademark doesn’t prevent the company from using it on their gear, it just removes the restriction on everyone elses ability to use it for their own purposes.
Removing a restriction on everyone BUT the company involved is not restricting the companies freedom of speech. So if you want to argue that the government shouldn’t be restricting peoples speech using trademarks then you should have them remove trademarks all together.
So I don’t believe that the Redskins Trademark issue is a freedom of speech issue, it is a commerce issue and should be pursued as such. Loosing the mark doesn’t prevent the redskins speech or expression.. it allows other people to use it without paying royalties to the Redskins and the NFL.
Re: Re: Re:2 Speech or Commerce?
until idiots like you came along
Your arguments have some merit, but you really do yourself a disservice by calling names. When someone resorts to name calling I tend to think they don’t have a very strong position and are resorting to argumentum ad hominem out of desperation. Just make your points, and let the other readers decide for themselves who is an idiot. Most of us can tell.
Given the DoJ thinks it doesn’t violate the first amendment to force a journalist to name their sources, I find it difficult to lend much credence to their claims that something does or doesn’t violate the First Amendment.
@ Full Speed Ahead —
If you’re so worried about tyranny, why are you so comfortable with the federal government handing out exclusive control over words and ideas in the first place?
No government employees are telling Snyder what to do. Dan Snyder could call his team the Washington N****rs and PTO wouldn’t be able to stop him. Saying “no protection” ≠ saying “no.”
The PTO only saying that Snyder (and the Slants) can’t summon to their aid the immense power of federal authorities, at taxpayer expense, should *other* people also slap “Redskins” (or ‘the Slants’) on their stuff too.
As the article points out, rescinding a federal registration doesn’t have nearly as much effect is Redskins-haters would like.
Re: Re:
If you read my post you would figure out that I do not support them having exclusive control over words and ideas. Learn to read.
I am only saying that they are there to act as a registry, so the first come is first served and to provide a mechanism to prove who had a right to the trademark in the first place.
Apparently you support the Government treating people and organizations differently depending upon the prevailing winds of the day’s politics. That has been and will forever be the same damning logic that justified slavery to begin with.
Either either Treat ALL equally, or stop being a government institution and get abolished! Or do you not believe in equal protection under the law?
Re: Re: Re:
“Apparently you support the Government treating people and organizations differently depending upon the prevailing winds of the day’s politics. That has been and will forever be the same damning logic that justified slavery to begin with.”
It’s also the logic that justified the end of segregation, women’s rights, right to privacy, same-sex rights, etc.
Re: Re:
Mostly to prevent fraud and confusion. You can sell your own soda, and you can even water it down to save on costs as long as your nutrition information is still accurate, but you can’t call it Pepsi. Just like you can write your own novel about space exploration, but you can’t copy Star Trek word for word because it’s copyrighted, no matter how much you want to express those same ideas.
Imagine that because you had the wrong yard sign up, the fire department refused to put your house out. After all, “saying ‘no protection’ ≠ saying ‘no'”, and it would be TOTALLY unfair to summon the immense power of the government “at taxpayer expense” to save such an offensive property.
Re: Re: Re:
Just like you can write your own novel about space exploration, but you can’t copy Star Trek word for word because it’s copyrighted, no matter how much you want to express those same ideas.
Keep in mind that the purpose of trademark and copyright law is different. Copyright isn’t about preventing consumer confusion. Even if you’re completely up front about not being the author and not owning the copyright, you still can’t distribute copies of Star Wars (unless you have some fair use defense).
Imagine that because you had the wrong yard sign up, the fire department refused to put your house out. After all, “saying ‘no protection’ ≠ saying ‘no'”, and it would be TOTALLY unfair to summon the immense power of the government “at taxpayer expense” to save such an offensive property.
That is just a terrible analogy.
New Name
I move we call them the Washington Deadskins, but folks may confuse the team with congresscritters.
Re: New Name
Given that Washington’s football team (no matter what you call them) has been more productive than the congresscritters I don’t see how anybody can confuse them!
Balancing acts
I agree, a fascinating case to watch.
There are lots of legal balancing acts out there:
I have the right to marry, but can’t currently marry another man in my state.
I have the right to marry, but can’t marry my sibling, parent, or child in any state, nor cousin in many states.
I have the right to travel, but can have my drivers license denied or revoked for many reasons, including purely bureaucratic or economic ones.
I have the right to keep and bear arms, but have to acquire a concealed carry permit to do so in the Texas Capitol building, and can’t do so in the US Capitol building.
I have te right of free speech but can be sued for libel and defamation, and can be jailed for fraud.
I have freedom of religion but can’t commit a human sacrifice, even with a volunteer.
I have freedom of assembly, but I can’t throw a party at YOUR house without your permission.
I have the freedom to enter into contracts, but the courts won’t enforce a contract for illegal acts, nor will they enforce contracts “against public policy” (like a lifetime agreement not to work for a competitor).
Folks who discuss rights in absolutist terms usually seem wholly unfamiliar with how the real-world legal system actually works.
Re: Balancing acts
If rights are not an absolute then they are in fact not rights at all… they are temporary benefits or privileges to be taken away on a whim by those with power or authority. Are you sure you have a brain Mr. Scarecrow?
Re: Re: Balancing acts
You’re thinking is very binary. Is there someplace I can download it?
Re: Re: Re: Balancing acts
Well… if you look at a very high resolution bitmap of Black and White pixels from far away at a random distribution you will see many shades of gray. Because of this, you mistakenly believe that there are multiple shades of gray, until you look close enough to realize… EVERYTHING is pretty much hard coded and an absolute. It is merely the arrangements of the 1’s and 0’s and lead you to ignorantly believe otherwise.
Go and read up on Chaos math and see how much control and absolute order there is in the universal… but wait… don’t… it might expand your mind beyond your reasonable ability to maintain it.
Re: Re: Re:2 Balancing acts
Nevermind
Open mind.txt
0
Save mind.txt
done.
Re: Re: Re: Balancing acts
Re: Re: Balancing acts
If rights are not an absolute then they are in fact not rights at all…
Then there can be very few rights. For example, in your worldview there cannot be property rights, unless you want to give up laws prohibiting things like murder. If my right to do what I want with what I own is absolute, then that includes bashing my neighbor’s head in with my hammer. If my right to freedom of assembly is absolute, then I have the right to hold a protest on your lawn (or in your bedroom) and there’s nothing you can do about it. Of course that means you cannot have any meaningful rights to your property. Fortunately we don’t live in a society that tries to operate as though all rights are absolute.
Equitable Defenses
The patent and trademark office apparently said nothing about the putatively ‘offensive’ nature of the term ‘redskins’, whenever the name was registered with them.
I expect that registration has been updated since then, and still nothing.
USPTO doesn’t get to come along now after – 10 years? 40 years? 80-odd years? – and suddenly find the term is offensive. I think the legal term is estoppel by acquiescence.
Re: Equitable Defenses
USPTO doesn’t get to come along now after – 10 years? 40 years? 80-odd years? – and suddenly find the term is offensive. I think the legal term is estoppel by acquiescence.
But if the team’s lawyer didn’t make that argument, the court can’t consider it, right?
Ridiculous
Yes, because this is an appropriate use of the federal government– making sure no one’s feels are hurt by a sports team name.
I wonder if they’ll bother to explain why they’re not opposing/canceling marks of other businesses that use trademark Redskin, like Redskin Tobacco Company?
"selectively" doesn't cut it
If “Redskin(s)” as part of a mark is offensive to the USPTO, then they must rescind ALL trademarks from ALL companies which have “Redskin(s)” in them.
And let’s not be sexist here – let’s get rid of “Squaw” marks while we’re at it…the ladies have the right to be offended as well, don’t they?
Then we can move on to every other name that might offend someone somewhere…
Pretty soon, the USPTO can shut their doors as no marks will be left to manage.
And as an added bonus, think of all the TM lawyers who will be out of business!
I feel like I’ve stepped into some bizzaro world where the government not enforcing restricted speech is somehow limiting freedom of expression.
Re: Re:
No, not bizzaro world… it was a bizzaro world when the US was created… we did something no other country did… espouse liberty our one of our founding principles…
You should not be surprised that people actually do not and cannot handle liberty and freedom. This is what made USA great! Now since we have elected for doing away with liberty and instituting socialism we are now just like the rest of the world.
Right now, if you flex 100% of your rights to he fullest you will be arrested and you will not find anyone to defend you.
Re: Re: Re:
That’s because most of us had parents who taught us at age two that stamping your feet, getting red-faced, and screaming about how life is not “fair” is not a productive way to get along…
Re: Re: Re:
Now since we have elected for doing away with liberty and instituting socialism we are now just like the rest of the world.
If you think the problem is socialism then you don’t really understand what’s going on. The problem is much more akin to fascism than socialism.
Re: Re: Re: Re:
Fascism, socialism, liberalism, it’s all the same thing.
Re: Re: Re:2 Re:
Fascism, socialism, liberalism, it’s all the same thing.
Translation: I don’t understand big words that end in “ism”.
Re: Re: Re:3 Re:
Translation: I don’t understand big words that end in “ism”.
Strangely enough, this appears to be a different A/C than the one I replied to, so maybe neither of them knows what they’re talking about.
If the team was smart they would have changed their name a long time ago, to avoid all this hassle and the expense of boycotts and constant legal battles over it, regardless of the legality over denying them rights to their team name.
Alternative name
How about Washington Readskins?
Re: Alternative name
Just replace the indian face with a sprouted spud (redskin potato of course)
File for a global trademark, skip the illegal antics of a corrupt, treasonous U.S. government.
Re: Re: Alternative name
Red skinned peanuts are from Virginia where the team’s HQ is located. Two of these sitting in front of the Washington monument would make a properly testosterone maiden logo.
That portion of the Latham act is pure bullshit and definitely violates the Constitution.
Freedom of speech means that anything you want to right or say can be written or said.
Trademarks are protective marks on unique “statements” or “phrases”, which, you guessed it, are based on “speech” or “written word”, which means they are protected by the 1st amendment.
Sorry Congress, but your law is invalid as it violates the tenet “Congress may pass no law…” portion of the bill of rights.
There’s no “People have the right not to be offended” anywhere in the bill of rights.
That means that the Constitution and Bill of Rights trumps this garbage act.
Time to kick the collective SCotUS in the balls or vag’s until they stand up and actually do their jobs correctly and rule based on the law and not some illegal political correctness stance just to fill their pockets with cash.
Re: Re:
write or say… sigh, writing angry – almost as bad as driving angry.
Re: Re:
However, since the existence of Trademark is a law passed by congress to direct who may use the mark, and the mark is speech, and congress may pass no law restricting anyone of such, isn’t the trademark laws just as invalid as the Latham act?
Re: Re:
Freedom of speech means that anything you want to right or say can be written or said.
Whose speech is being restricted by this trademark being cancelled, and how?
Re: Re: Re:
The Redskins’ speech. (Really, the owner’s speech, since he’s the one who decides what the name is.) The entire purpose of the lawsuit is to “force” them to change the name because the plaintiffs don’t want the term to be used.
How? By denying them their trademark registration, which literally every other team in the league has.
Re: Re: Re: Re:
The entire purpose of the lawsuit is to “force” them to change the name because the plaintiffs don’t want the term to be used.
But even the team’s counsel agrees that this cancellation will not prevent them from continuing to use the same team name and marks as always. So I ask again, what speech would this curtail?
Re: Re:
“Trademarks are protective marks on unique “statements” or “phrases”, which, you guessed it, are based on “speech” or “written word”, which means they are protected by the 1st amendment.
Sorry Congress, but your law is invalid as it violates the tenet “Congress may pass no law…” portion of the bill of rights.”
Watch out everyone we have ourselves a constitutional lawyer here
Re: Re:
“Freedom of speech means that anything you want to right or say can be written or said.”
That’s right. However, being unable to trademark something in no way stops you from using or speaking that thing.
The Washington Lobbyists.
Trade Dress, "Passing Off"
“Passing Off”
Larson v. Terk
See Sears v. Stiffel… However, the Court also emphasized that a State may, in appropriate circumstances, require that goods, whether patented or unpatented, be labeled or that other precautionary steps be taken to prevent customers from being misled as to the source, just as it may protect businesses in the use of their trademarks, labels, or distinctive dress in the packaging of goods so as to prevent others, by imitating such markings, from misleading purchasers as to the source of the goods…
“A State of course has power to impose liability upon those who, knowing that the public is relying upon an original manufacturer’s reputation for quality and integrity, deceive the public by palming off their copies as the original.”)…
In summary, we affirm the district court’s finding that Terk intentionally, willfully, knowingly, surreptitiously and fraudulently passed off counterfeit goods of inferior quality as Larsen’s authentic Danish-made goods in violation of § 43(a) of the Lanham Act…
– – – – – – – – –
M. KRAMER MANUFACTURING CO. v. Hugh ANDREWS
Section 43(a), although enacted as part of the trademark protection act, does not apply exclusively to infringement of registered trademarks. Rather, the statute protects against certain deceptive practices whether or not a trademark is involved.
…
I think there’s a big difference between “you can’t trademark this because it’s confusingly similar to an existing trademark”, and “you can’t trademark this because we don’t want you to use that term.” Just like there’s a difference between “you can’t copyright this cartoon because it was drawn by a monkey” and “you can’t copyright this cartoon because a religion finds it blasphemous.” One is a legitimate restriction, the other is merely punishing content you don’t like.
Why the fight?
I don’t get it, why are they fighting so hard to keep the name?
You buy a football team to make money, no? Change the name, sell the current merchandise as collectibles, and then reap the benefits of all the fans that need new merchandise. Screw wasting money to fight changing the name.
Re: Why the fight?
I don’t get it, why are they fighting so hard to keep the name?
I think it’s just an emotional thing with the owner. And at this point he feels like he “can’t back down”.
Re: Re: Why the fight?
Re: Re: Re: Why the fight?
Well, that and a principled stand against gross government overreach.
I doubt that has much to do with it, since 1) he resisted pressure to change the name for a long time before this trademark issue came up and 2) this action by the USPTO does nothing to force him to change the name. I’m not inside his head though, so I can only guess at his motives based on how he’s behaved.
Re: Re: Re: Why the fight?
“Well, that and a principled stand against gross government overreach.”
That can’t possibly be, since he’s OK with being involved in professional football at all — which benefits tremendously from gross government overreach in the form of having a congressional exemption from antitrust laws in exchange for congress having the power to regulate it.