So, how about those Redskins?
I’ve been writing about the Redskins and the tribulations — and, as it turns out, trials — of their REDSKINS trademarks since long before that first post about that rock band in Portland — a blog post that presented me with the opportunity to actually change the law I’d been kvetching about in those early Redskins posts, though I hardly thought that was the assignment I was accepting at the moment. More on that later.
Still and all, that’s not something a blogger gets to do every day.
So, now, how about those Redskins?
Most of the reporters I spoke to after the opinion in In re Tam came out last week wanted to know how I thought our case would affect the NFL’s case. Though we had very pleasant conversations, and often very long ones, the fruits of these discussions were seldom reflected in what was published, to put it mildly, if they were reflected at all. This is the way of journalism, of course.
The good thing is that if I have something to say I can say it here. I do, and based on what I’m seeing out there, I think it should be said, because I don’t believe that, so far, anyone else is saying it.
Again, first, let’s step back to when the original TTAB decision was issued in the Redskins appeal of the PTO’s unprecedented cancellation of its REDSKINS registrations. I did post here on the topic, but gingerly, because our appeal of the denial of THE SLANTS registration was still working its way through the system. The heart of what I wrote was this:
The opinion is remarkably thorough and is ultimately grounded in what appear to be mountains of carefully sifted, weighed and analyzed factual evidence developed through years of litigation. In this respect it certainly represents, even if arguably at the high end, the sort of careful evidentiary record that ought to form the basis of a section 2(a) denial. Yet it is significant that the dissenting judge came to a different conclusion from that of the majority about the key issue factual issue as determined by the panel, i.e., whether the registration ran afoul of section 2(a) at the time the mark was registered.
The question of going back in time to make such determinations is inherently rife with problems, and the TTAB did not really wrestle with them. Arguably it was not within their scope of review to do so. 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.
Moreover, not all section 2(a) refusals merit the level of factual inquiry and careful analysis of evidentiary issues on display in the REDSKINS appeal. Most applicants have neither as much at stake the Washington Redskins did here nor the budget to apply to defending their registration. The care and effort invested in the TTAB’s decision here reflected these unusual factors, but unfortunately not every 2(a) dispute that comes to it can expect such well-developed treatment of the issues and evidence.
Finally, the 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.
It’s not too daring to suggest that after In re Tam, this analysis can only stand on firmer ground. (Obviously, I’ve written a lot more than that as well on the whole topic of Section 2(a) policy and practice. A good place to read a relatively recent overview and collation of it is here.)
Yet most of what I am reading sounds like a variation on this: “The Federal Circuit is very prestigious / influential / persuasive on trademark matters, but the Fourth Circuit is not bound by it one little bit, and a split is possible, and if that occurs, and it probably will, Supreme-Court-ho!”
Yes, for some reason, “if that occurs” in these analyses always seems to become “it probably will.” This must be something people write to make their blog posts or columns exciting, because I have not seen any compelling explanation as to why the Fourth Circuit actually would disagree with the new holding of the Federal Circuit. Why assume the likelihood, or even a serious possibility, of an affirmance of the Eastern District of Virginia’s Blackhorse decision — keeping separate and apart, for now, the question of certiorari to the Supreme Court?
As a threshold matter, the mere fact that the vast majority of appeals from district courts are (mindlessly) affirmed is, in a case of this prominence, pretty irrelevant here, we can all agree. The Fourth Circuit knows this case is being watched closely. It knows a sister circuit, and a highly respected and influential one, has spoken definitively.
And what would be the basis for the Fourth, or any other federal circuit court, to depart from the Federal Circuit’s direction at this point? Keep in mind that every circuit that has ruled on this issue has, even if citing its own precedent, ultimately done so on the basis of In re McGinley, 660 F.2d (C.C.P.A. 1981), decided by the court that is now known as the Federal Circuit. That case is no longer good law, and the fundamental reason it is no longer good law is because of developments in First Amendment jurisprudence that have originated in the United States Supreme Court — not the Federal Circuit.
So on what basis, exactly, are these other circuits going to base their disagreement?
I am not that naïve. They can base it on anything they want. They are federal judges. They have robes, clerks, secret entrances. There are certainly ways to do this, if they want to. But from a flat-footed survey of the jurisprudential landscape, it is not clear to me from which well the Fourth Circuit would be drawing in rejecting In re Tam, relying on the very precedent that that case rendered invalid and leapfrogging over the considerable body of First Amendment jurisprudence on which the majority based its opinion.
Ah, but wait — you said “majority,” Coleman! What about the concurrence and the dissents? These are not chopped liver! Indeed, these — well, not all of them — but within these are, for sure, whatever raw material the PTO and the Blackhorse will have to hope will be used by whatever supporters they have among the judges on the Fourth Circuit. That may happen in what is left of submissions and argument in the present of the appeal (the Blackhorse brief is due on January 14th); or perhaps in the course of some sort of stay application or other procedural business in In re Tam.
How exactly those arguments could be reworked for the benefit of the Blackhorse plaintiffs, who have other issues to overcome, remains to be seen. That brings me back to my opening comments, and the passage from my earlier post quoted above. There’s a point that needs to be made; it can’t be made enough; but it seems that just about no one is making it, because, understandably, very few people are familiar with the underlying procedural history of In re Tam and the underlying PTO record. It’s really a big deal and it really goes to the heart of what is at stake here.
You have to dig deeper even than the first round of Federal Circuit briefing, where, you will forgive me, but we started getting polite, and we omitted passages such as this one which were in the brief submitted to the TTAB:
The Examining Attorney’s rationale turned the entire policy justification for Section 2(a) on its head. It was a refusal to register based on the ethnic background of Applicant and his associates that was offensive. Unless reversed by the Board this formulation inevitably will involve the Patent and Trademark Office in inappropriate and constitutionally suspect inquiries concerning the ethnicity of applicants, their associates and their activities. . . .
The refusal here was explicitly, and improperly, premised on the ethnic identity of Applicant and the other members of his band. “Here,” wrote the Examining Attorney, explaining the “association” between the mark and the Asian community, “applicant is a founding member of a band . . . composed of members of Asian descent. . . . [The] association of the term SLANTS with those of Asian descent is evidenced by how Applicant uses the mark – as the name of an all Asian-American band.” By the Examining Attorney’s logic, the same exact application submitted by a non-Asian would be entitled to registration. THE SLANTS, the PTO admits, is not inherently offensive, as, for example, HEEB and SQUAW are. THE SLANTS could be registered as a trademark – just not by Asians. It should go without saying that the law does not support refusal of registration based on the ethnic descent of an applicant, such as occurred here.
Indeed, it is no less troubling that the Examining Attorney noted that there was no “rebuttal” to his assertion that The Slants were an “all Asian-American” band. The only possible “rebuttal” would have been a submission proving that the band was not entirely Asian and hence entitled to registration, a patently offensive proposition. In any case, the standard to which such “evidence,” if submitted, would have been applied is unclear, for the Lanham Act is silent as to how many Asian members of The Slants would need to be fired from the band to avoid offending Asians by registration of this trademark.
So, here’s the thing. None of the stuff about the identity of Simon Tam, or the ethnic-associated use of THE SLANTS by his band, was anywhere in the refusal of the application to register THE SLANTS from which the appeal that In re Tam originated.
Again: It all was from a previous, abandoned application, as I’ve explained many, many times.
When The Slants called me up in 2011 because of the blog post, I looked at their pending (2010) application, and said, no way. This is a loser under Section 2(a). Not because I think this, that or the other thing about Section 2(a), but because it’s there, and this is how it works. I gave up fighting free speech fights on trademarks a long time ago, thank you. We’re going to going to let this application die, and file a new one, with no Chinese imagery. “Slants” is a word, and it’s an English word. You’re a band; and it’s your band’s name. Let’s just put in your application for a band called The Slants and get you your registration.
I’ll do that pro bono. That sounds like a fun project.
Little did I know that the PTO would not let Simon and the Slants abandon their previous application.
Little did I know the TTAB would say it was just fine for the PTO to determine “trademark use” based on the ethnic identity of the applicant himself and the members of those who use his trademark with him — because that’s who he really was, and the PTO knew what he really meant.
Little did I know, as events developed, that it would take a constitutional wooden stake through the heart of Section 2(a) to kill at least this part of it, right through that frosty morning in Washington when I almost overslept my appearance before the three-judge panel that sprung the constitutional issue on us, as I explained in this post.
But now I am quite convinced that this way — the First Amendment based invalidation of the statute — was, indeed, the only way the thing could die; and that is why the Redskins must win; and why the Fourth Circuit, when it looks at this record, and the record in the TTAB and the District Court below, must reverse the latter and agree with In re Tam.
By so doing, they will join the Federal Circuit in returning the trademark experts of the Patent and Trademark Office to the task of examining trademarks, which they do so well.
But examining hearts? Please.
We do not even know our own.
UPDATE: LOLZ from Marc Randazza — his take on how our case affects the Redskins.
More update: I knew my friend and colleague Steve Baird, who can practically be called the godfather of the Blackhorse legal strategy (his law review article is cited in In re Tam), would have a visceral reaction to the outcome. But I was hardly ready for this take by him.