The owner of the Washington Redskins moved quickly to insert itself into any Supreme Court consideration of the constitutionality of the Patent and Trademark Office authority to cancel a registered trademark because it disparages persons. This step was taken because another trademark case involving disparagement recently landed on the Supreme Court’s door step, while the case involving the Redskins trademark registrations is months away from reaching the Supreme Court.
The Redskins trademark cancellation case has become procedurally complicated. Some background may be helpful.
Pro-Football, Inc. (PFI) has been the owner of the Washington Redskins since 1932. The Redskins name was first used in 1933 when the franchise played in Boston. Use of the name Redskins gave PFI “common law” rights protecting the name as a trademark. In 1937, the team moved to Washington. It was not until 1967 (and later in 1974, 1978, and 1990) that the Patent and Trademark Office (PTO) granted PFI federal registrations of the Redskins marks. Registration of a trademark or service mark gives the owner additional substantive and procedural rights to protect its mark, over and above the common law rights that arise from just using the mark in commerce.
This legal controversy over the Redskins registered marks began in 1992, after years of relative calm about the name. Susan Harjo and five other Native Americans filed an action with an administrative body within the PTO asking that the Redskins marks be cancelled because they disparage Native Americans. Under §2(a) of the Lanham Act, which provides for federal registration of trademarks and governs how the process works, the PTO has the power to cancel registrations that “may disparage” persons. In 1999, the PTO cancelled the registrations because of disparagement. The case then went into the federal courts in Washington D.C. where it was well-litigated until 2009. The last decision in Harjo finally held that the 1992 action to cancel was barred because of “laches,” meaning it was brought too late.
Meanwhile, while the Harjo action was still being litigated, in 2006 Amanda Blackhorse and several others asked the PTO administrative court to cancel the same Redskins registrations. Blackhorse and the other challengers had not yet reached age 18 when the PTO cancelled the registrations in 1999, and they did not unreasonably delay in filing a new action at the PTO, an action without a laches problem. The PTO cancelled the registrations again in 2014, holding that at the time of the registrations the Redskins marks contained subject matter that may disparage Native Americans and subject them to contempt and disrepute. On appeal to the U.S. District Court in Alexandria, Virginia, the court upheld the PTO and the cancellation of the registrations. Pro-Football, Inc. v. Amanda Blackhorse. PFI appealed to the U.S. Court of Appeals for the Fourth Circuit in August 2015, continuing an apparently uphill battle. The appeal in Blackhorse is still pending.
Five months after PFI noticed its appeal, another trademark decision for disparagement rode in like the cavalry. The case is entitled Tam v. Lee from the U.S. Court of Appeals for the Federal Circuit (en banc) and involves an all-Asian rock band called “The Slants”. The band’s front-man, Simon Shiao Tam, named the band “The Slants” because he wanted to make a statement about racial and cultural issues; to “take ownership” of Asian stereotypes. He sought to register the name in 2010. The PTO, however, refused to register “The Slants” because the PTO found the name to be disparaging to the Asian community. In Tam v. Lee, the Federal Circuit held that the disparagement bar in §2(a) is unconstitutional because it violates the First Amendment. This decision supports continuing the registrations of the Redskins trademarks.
As welcome as the Tam decision is to PFI and its attorneys, the case also causes some procedural problems. PFI realized that the attorneys from the U.S. Justice Department (DOJ), representing the PTO, could try to take the case to the Supreme Court for review – Tam could be decided by the Supreme Court before Blackhorse or without Blackhorse, shutting off PFI’s chance to have the Supreme Court rule on the Redskins registered trademarks.
Sure enough, on April 20, 2016, the DOJ filed a petition for certiorari asking the Supreme Court to review the Federal Circuit’s decision in the Tam case. PFI was ready for its next step. Five days later, on April 25, 2016, PFI’s attorneys filed in the Supreme Court a petition for certiorari “before judgment” is rendered by the Fourth Circuit. The federal statute empowering the Supreme Court to issue a writ of certiorari does permit the writ (an order) to issue on a petition filed “before or after rendition of judgment.” 28 U.S.C §1254. Petitioning for review before judgment of the lower appellate court is rare, but less so when the DOJ files the petition. PFI cited only five cases in the Supreme Court since 1946 where the Court issued a writ of certiorari before judgment at the request of a private party.
PFI asks three things of the Supreme Court: (1) to not to review Tam because it is correctly decided, (2) to decide the constitutionality of §2(a), if at all, only after the Fourth Circuit decides PFI’s appeal in the Blackhorse case, and (3) if the Court grants review in Tam, the Court should grant PFI’s petition and review both cases together. PFI argues several reasons to support its petition before judgment. First, the only issue in Tam is the constitutionality of the §2(a) disparagement provision, whereas important and connected issues are present in the Blackhorse case – whether §2(a) is impermissibly vague and violates the Fifth Amendment and whether the decades-long delay between registration and cancellation violates procedural due process. Second, the decision should be rendered in the contexts of both registration and cancellation. Third, the issue is of imperative public importance. Fourth, Blackhorse is a valuable companion to the Tam case and indeed essential to a comprehensive review of the constitutional questions.
The Redskins trademark registration dispute is pending in two courts. The Fourth Circuit has months of work to do before it decides the appeal – oral argument and writing opinions – and the Fourth Court may wait to see what the Supreme Court does with PFI’s petition for certiorari. A Supreme Court decision to review the Tam decision could preempt any opportunity for PFI to have the Supreme Court decide the dispute over the cancellation of the Redskins trademark registrations.
One last recent development is a poll by the Washington Post released in May 2016 that shows 9 out of 10 Native Americans, today, are not offended by the Redskins team name. A 2004 Annenberg Center poll showed the same result. Regardless, current polls on disparagement are legally irrelevant unless and until the Supreme Court holds otherwise.
Whether the Supreme Court will make sure that the PFI and the Redskins trademark registrations are invited to the table for the proceedings remains to be seen. In any event, cancelation of the federal registrations would not prevent PFI from continuing to use “Redskins” in various common law marks, albeit marks that are harder to enforce and protect.
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© 2016 Gorman & Williams