The Last Potential Prayer for the Washington Redskins: The Recent Holding Within the Federal Circuit Regarding Disparaging Trademarks

February 25, 2016

‘Welcome to today’s game between the Baltimore Blackskins and the San Francisco Yellowmen. . . . [T]he Yellowmen . . . [are] led by their famous cheerleaders, the Geisha Girls. . . .’ Ask yourself these questions: If your skin color, race or religion were parodied in nicknames or mascots or team logos, wouldn’t you be offended?
Marks that are disparaging, such as the “Baltimore Blackskins” or the “San Francisco Yellowmen,” have been consistently controversial within trademark law. Case law has defined disparaging marks as marks that are perceived to be derogatory by a substantial composite of the group allegedly disparaged. When Congress enacted the Lanham Act in the 1940s to provide guidelines for what marks were protectable under federal law, disparaging marks were not expressly banned. However Congress has since expanded the Lanham Act to exclude disparaging marks from federal protection under Section 2(a).
One of the most heavily discussed legal disputes involving disparaging marks has been over the well-known mark the “Washington Redskins.” After many years of debate both inside and outside of the courtroom, the Trademark Trial and Appeal Board eventually granted the Native Americans’ petition and ordered that the Washington Redskins’ trademarks be cancelled in 2014. However since the decision by the Trademark Trial and Appeal Board, the Washington Redskins have been in the appellate process within the Fourth Circuit praying for its trademarks to receive federal protection once again.
A recent decision by the United States Court of Appeals for the Federal Circuit in In re Tam has furthered the controversy over disparaging trademarks, and has the potential to impact the appellate process for the Washington Redskins. In re Tam involved an Asian-American dance rock band who sought to receive federal trademark protection for its band’s name, “the Slants,” which is a derogatory term for Asians. After the Patent and Trademark Office and the Federal Circuit refused to allow registration for the mark, the bassist, Tam, appealed the decision on the basis that Section 2(a) is unconstitutional; Tam claimed that his band was denied their right to exercise constitutionally protected speech. The United States Court of Appeals for the Federal Circuit agreed with Tam and reversed the lower courts’ decisions holding that Section 2(a) is unconstitutional since trademarks have expressive qualities that warrant the full range of free-speech protection. Therefore, the In re Tam Court held that since the band chose the mark “Slants” “to create a dialogue on controversial speech elements” the mark exemplifies this expressive quality and must be provided federal protection.
Much of the legal community has found the majority opinion within In re Tam to be controversial. Eric Ball of Fenwick and West stated that he has never seen the approach taken by the In re Tam majority in another case and found it “quite interesting” that the court identified trademarks not as commercial speech, but as expressive speech. The decision has also made the legal community question whether the Lanham Act has become outdated and no longer accurately represents the place trademarks hold within our culture.
However I postulate that the United States Court of Appeals for the Federal Circuit’s decision should not have any significance within the ongoing legal dispute regarding the Washington Redskins or any other pending or future litigation regarding disparaging trademarks.

It is the duty of public authorities within the government to prevent attempts by commercial enterprises to create trademarks that offend the basic values of our civilized society and promote “decency, welfare, and morals.

This should not be viewed as silencing or censoring.  Trademarks are commercial speech; they provide the knowledge necessary for customers to make an educated decision in their purchases. In fact the Supreme Court of the United States held in Friedman v. Rogers  that since trade names are ‘used as part of a proposal of a commercial transaction,’ their use is a form of commercial speech that deserves a limited measure of protection under the First Amendment.
Therefore to correct this erroneous holding and ensure that the slippery slope of holding additional portions of the Lanham Act to be unconstitutional does not occur, the Supreme Court of the United States must reverse the decision within In re Tam.  Although First Amendment protection is key within our society, it is outweighed by the consequences of allowing disparaging trademarks, such as the “Washington Redskins,” within our society and must not be allowed.