— Ron Coleman (@RonColeman) September 10, 2015
The Eastern District of Virginia has ruled (link to opinion here) on the summary judgment motions in Pro Football v. Blackhorse in the NFL’s appeal to the District Court of the TTAB’s cancellation of the REDSKINS trademark registration.
The opinion is 70 pages long. Spoiler alert: It doesn’t come out good for the Redskins.
There will be plenty of commentary on this, an doubtless an appeal, but you’re not going to get that commentary from me. Not here, anyway, and not before we finish up our own appeal business.
The approved and publishable amicus briefs in the appeal regarding the trademark registration of THE SLANTS are trickling in. Certainly interesting to see who is saying what. So far, they all seem to be on the side of The Slants, though interestingly the INTA amicus brief does not take a position on the First Amendment issue (maybe because that’s usually a subject raised by defendants in infringement cases?) but instead addresses, as is appropriate given INTA’s level of trademark expertise, the issue of 43(a) of the Lanham Act. INTA urges, understandably, that the constitutionality question “does not turn” on the availability or interpretation of 43(a) protection for unregistered marks.
What do we have? Here’s the amicus brief of Public Knowledge, styled as “in support of neither party”; here is Pro Football, Inc.’s (i.e., the Washington Redskins’) amicus brief very much in support of appellant; and now comes the First Amendment Lawyers Association (that’s Randazza and friends).
Here’s one we hadn’t counted on: a submission by the Rutherford Institute together with the Cato Institute. Cato’s blog post, authored by Ilya Shapiro, is here; the Cato / Rutherford amicus brief is here.
Hey, what happened to the ACLU, which, formerly (you should pardon the expression) confused, has now seen the light on this business? Evidently the dog ate their ECF registration, and the ACLU amicus brief was filed a day late — today — along with a motion seeking permission to do that, for reasons set out therein. Enough said — they are our friends (now) and, unlike those stinkers at Public Knowledge, say so right on the cover of their submission.
Okay, and what about those guys over at Public Knowledge? Read More…
Here’s some news: The American Civil Liberties Union says the Redskins are wrong, damned wrong — but they’ve got every right in the world to be that way.
They even filed an amicus brief in the District Court in support of the Redskins’ right to be wrong. Amicus briefs at the trial level are quite unusual.
The ACLU’s brief, and an earlier blog post on its site, both make explicit reference to the appeal of the PTO’s rejection of The Slants’ application to register their trademark, THE SLANTS, and to the inconsistency of the PTO in permitting “reappropriation” of derogatory terms when it comes to certain categories but not others: Read More…
When the PTO’s decision revoking the REDSKINS registrations was affirmed by the TTAB, I asked, as others — including the NFL — have asked, whether such sociological (not to say historicist) time travel concerning the REDSKINS mark comports with constitutional due process. It’s a serious question.
Indeed, it seems that when it comes Section 2(a), pretty much anything goes, procedurally, at the PTO, as long as the outcome is “no.” There’s one category of exceptions, as The Slants noted on their appeal. And it’s the exception that proves the rule. It’s hard to see how it can be otherwise when slurs referring to what was once called lifestyle choices have been allowed registration while those referring to ethnicity are not.
Could one answer by saying that the statute doesn’t prohibit disparagement of behavior or, even, perhaps, sexual identity, but it does prohibit disparagement of ethnic groups?
There’s only one problem with that. Here’s the statute (emphasis added, obviously):
1052. Trademarks registrable on the principal register; concurrent registration No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it–
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or 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 . . .
So, what are we talking about here? The relevant language is “disparage . . . persons.” Are ethnic groups “persons”? Are any groups of persons, persons?
Not according to TMEP 1203.03(a), which explains, based on the cases, that “Section 45 of the Act, 15 U.S.C. §1127, defines “person” and “juristic person” as follows:
The term “person” and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this Act includes a juristic person as well as a natural person. The term “juristic person” includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.
So what gives? This definition of “person” doesn’t seem to include races, colors, “peoples,” or “nations” in the ethnic sense.
Yesterday I ended part one of this post about a proposed law to outlaw any trademark registration rights for the NFL’s Washington Redskins with this question: Given the offensive nature of the trademark by all accounts and the strong “political” (not, strictly speaking, congressional) support for such a measure, why didn’t Representative Mike Honda go all the way and propose outlawing any federal enforcement, including in the judiciary and including with respect to common law marks, state-granted registrations or any claim sounding in unfair competition, of any REDSKINS trademark? Why stop at half-measures such as prohibiting past and future registrations?
I can think of at least three possible reasons. One is that no one on his staff understands the difference between trademark registration and trademark rights either. Don’t rule that possibility out — we’re talking about Congress here.
Number two is that such a bill would probably have to go through the Judiciary Committee. Congressman Honda isn’t on that. And the Judiciary people — they certainly do understand this stuff, which that raises the third possibility, separate and apart from committee assignments: Namely, such an idea, no matter how you dress it up, was obviously beyond the pale. Face it, even in Washington there are some assaults on the Constitution people won’t try, at least out in the open.
Which leads me to my next point: Registration versus rights? Really? Is it really such a trifling thing to shut the door on a party seeking to register its trademark (much less depriving it of a mark it has already been granted)?
This is the point I arguably stumbled over arguing the appeal of the PTO’s rejection of THE SLANTS in the Federal Circuit, as discussed here. But as we argued in our submissions, and did manage to say on rebuttal during oral argument, the Lanham Act, in its current form, cannot be said merely to give a procedural or ministerial benefit to trademark registrants. Registration of trademarks does, in fact, have constitutional dimensions not present when the Federal Circuit’s precedent on this question, In re McGinley, was decided:
While many of the benefits conferred by a registration existed at the time of the McGinley decision, the Trademark Law Revision Act of 1988 significantly expanded the substantive rights afforded to owners of federal trademark registrations. See 1 McCarthy on Trademarks and Unfair Competition § 5:9 (4th ed.) One of the more notable amendments in 1988, was the introduction of the new concept of “constructive use” which provides that “[c]ontingent on the registration of the mark on the Principle Register, the filing of an application to register constitutes ‘constructive use’ of the mark. This confers a right of priority, nationwide in effect … .” Id.; see also 15 U.S.C. § 1057(c).
That’s the fact, Jack. It’s not so much more a dubious proposition to limit the PTO’s ability to register REDSKINS trademarks than to make them unenforceable as a matter of federal law; both are incursions on free speech. Read More…
For years I’ve been complaining that so much of the excitement in intellectual property law jurisprudence these days involves policy-making by judges and the PTO.
- How and what is secondary liability for trademark infringement, and what isn’t?
- Are defendants entitled to attorneys’ fees when they win a copyright infringement case?
- How much ethnic identity is too much for a trademark to be used in an ethnically offensive manner?
- How much, really, should the PTO’s determinations in a trademark registration proceeding preclude its substantive rights in other contexts?
Funny thing! So, as it happens, I was recently quoted in an article in the World Intellectual Property Review on the topic of our old favorite, the Redskins trademark case. And it went like this:
Few intellectual property lawyers in the US (and elsewhere) will need reminding that professional American football team the Washington Redskins was stripped of six trademarks last year after a decision by the US Patent and Trademark Office’s Trademark Trial and Appeal Board.
The term ‘Redskin’—a slang word for a Native American and variations of which were used in all six trademarks—was deemed offensive.
In response to the ruling, the team filed a lawsuit against the Native Americans who initiated the challenge, in an attempt to keep its trademarks. The Native Americans, unable to dismiss the suit, will face off with the club at the US District Court for the Eastern District of Virginia this year.
Ron Coleman, partner at US law firm Goetz Fitzpatrick, says: “The drafters of the Lanham Act [the US’s federal trademark statute] never considered whether a registration could be revoked retroactively upon a finding that, when applied for, the trademark was not eligible for registration because late-coming petitioners succeeded in proving that it was derogatory of an ethnic group.”
Yes, I said that. Now, a few things, both of which were pointed out by me in a post I wrote around the same time I was contacted by that reporter. Well, first, one thing that was pointed out by John Welch: the writer’s statement that “the Washington Redskins was stripped of six trademarks last year ” is inaccurate: The Redskins were stripped of registrations, not trademarks. They can still, and will still, sue your pants off for pretty much everything trademarky they could sue your pants off for before.
Secondly, yes, Congress never considered that stuff I said. The whole of my argument, per my blog post, is this — indulge me here; there’s more to come:
While the goal of avoiding offense by government actions such as trademark registration is laudable, achieving that goal seems more than ever to embroil agencies and judges in deciding highly-politicized and sensitive issues that are arguably not appropriately determined by either. Adding “time travel” to their task only makes it more onerous. . . .
[T]he policy question of whether a registration should be revoked retroactively, after decades of use by the registrant following allowance and evidently with no time limit — as long as the evidence is found to support a contemporaneous finding of disparaging meaning — is probably one that Congress should address. Its application in this case, regardless of the merits under the standards applied by the TTAB, is certainly troubling.
Originally posted on June 18, 2014.
I’ve been writing about the dispute over the REDSKINS trademark on this blog more or less since the beginning of the blog itself.
Today a new chapter has been written — or rewritten. The TTAB has ruled and, not particularly surprisingly, the NFL team called the REDSKINS has been deemed, nunc pro tunc, to have run afoul (along with the Patent and Trademark Office itself) of Section 2(a) by registering a trademark that was disparaging of American Indians. Several of their trademark registrations (NOT ITS TRADEMARKS) have been ordered to be cancelled.
As I read the opinion I sort of live-tweeted, on my personal account (as opposed to this blog’s Twitter feed) my observations of the key points as I went along, starting with the holding set forth in the introduction. You can now relive that excitement here, plus read my extra bonus observation at the end of the post:
— Ron Coleman (@RonColeman) June 18, 2014
Sorry about the pun — but then again, I’m not the PTO; then again, too, my attitude toward “scandalous and offensive” ethnic marks is different from that of lots of people, too. This one, in particular, has long rubbed me the wrong way.
Unsurprising: Great reliance on the issues raised by the dissenting TTAB judge regarding the serious evidentiary problems with the TTAB ruling. This is the core argument in our Federal Circuit brief on behalf of THE SLANTS. Also interesting:
- There’s a cause of action for a determination that Section 2(a) is void for vagueness, which we also argue in the SLANTS brief;
- The Redskins claim that the ruling, coming so late in the historical game in terms of the history of the REDSKINS trademark, did not merely err in terms of laches, but that due to the long use of the trademark by the team violates the Due Process Clause and the Takings Clause of the Constitution;
- Particularly interesting: It’s de novo review by the District Court in Virginia, not an appeal to the Federal Circuit. A party appealing from a TTAB ruling can, in most circumstances, do either of these.
Did the Redskins take the appeal to the District Court approach due to a perception that, based on its recent track record, the Circuit is inclined to approve 2(a) determinations of scandalous ‘n’ offensive as a rule? Probably not. It probably has more to do with the fact that, unlike in THE SLANTS case, the REDSKINS case is premised on an unusually rich factual record. The team’s argument is that, given every opportunity imaginable to prove its case, the plaintiffs Blackhorse failed. Remember that the burden on the particularly onerous one: Proving that the REDSKINS marks were disparaging to American Indians at the time they were registered, i.e., 1967-1990.
That’s a very different kettle of fish, however, from proving it by a preponderance of the evidence.
On reading the REDSKINS decision, I was not surprised to find that the nature of the “proof” relied on by the TTAB was, as it admitted in its opinion, highly “inferential.” Given the burden on the plaintiffs, and the profound interests, including bona fide commercial ones premised on a very reasonable presumption of the correctness of an agency’s repeated administrative decision, the idea that the TTAB would be swayed by so much inferential evidence is pretty surprising —
Suprising… Read More…
Well, they’re not over. Or are they?
Live with me in real-time, real-life blogging time.
I got excited by a link on my Google alert for trademark news, to this story in the Washington Post:
As Redskins’ struggles drag on, so does court challenge to name
By Courtland Milloy, Published: January 1
Back in 1992, Washington reigned as Super Bowl champs with high hopes for two in a row under coach Joe Gibbs. That year, a Native American resident of the District, Suzan Harjo, became the lead plaintiff in a lawsuit seeking to change the team’s disparaging name: Redskins.
As the legal battle over the name enters its 20th year, let’s review some highlights of a struggle in which moral victories by the plaintiffs often coincided with demoralizing losses by the team on the field — including dashed hopes of winning another Super Bowl.
So far, so good: Some new development! Looks like I can post on the seemingly intractable trademark troubles of the Washington Redskins!
But… what’s the new news? Here’s the last paragraph of the story, which refers to the earlier dismissal of the Harjo case on laches grounds:
2012: Another lawsuit to get rid of the team name, Blackhorse et al v. Pro-Football Inc., will be working its way through the courts, this one from a younger group of Native Americans who cannot be said to have “waited too long to file.”
But they have already waited too long for justice.
So, then, what is the status of Blackhorse that made it newsorthy at the Post? Well, not much; it is kind of creeping along. A few weeks ago, the parties filed a joint stipulation of facts in the opposition action pending in the TTAB. Not a lot to report.
Slow news day? I guess in the sports department, it pretty much always is, in Washington. But Happy New Year!