— Jessica Gutierrez Alm, Attorney
In appealing the cancellation of six trademarks, the Washington Redskins filed their opening brief in the Fourth Circuit this week. Cancellation of the team’s REDSKINS trademarks was upheld by a federal district court in July. The marks were deemed “disparaging” under Section 2(a) of the Lanham Act, which denies trademark protection to marks that are scandalous or disparaging.
The team is now appealing the district court’s decision. A primary argument presented in the team’s opening appeal brief is the First Amendment argument. Essentially, the Washington team argues that cancellation of its trademarks under Section 2(a) violates free speech rights, because the marks are a form of expressive speech. Of course even without a federal trademark registration, a mark may still be used. The team can still call themselves the Redskins and sell Redskins merchandise, but cancellation of the marks means they will not enjoy the protections and benefits that accompany federal registration. The team argues that by denying those protections and benefits of the federal trademark registration, the government is infringing on the team’s free speech rights.
The lower court held that Section 2(a) does not violate the First Amendment, in part, because federal registration of a trademark represents a form of government speech, rather than private speech. That is, the government may freely choose which marks it wishes to include as part of its federal trademark registration program.
In an effort to thwart this argument and show that federal trademark registration is not a form of government speech, the Washington team made the bold choice to include in its brief a long list of—colorful—marks that have been successfully registered. The list seems primarily compiled from the adult entertainment industry, and includes, among many, many others, TAKE YO PANTIES OFF clothing, SLUTSSEEKER dating services, and MILFSDOPORN.COM pornography. A footnote in the brief actually states that “word limits” prevented the team from adding even more to their offending list.
While the purported purpose was to address whether trademark registration represents government speech, the sheer length of the list leaves the distinct impression of an underlying argument: Well if these dirty words can be trademarked, why can’t we just trademark our team name?
At first blush, it may seem like a fair argument. As presented in the brief, the list of clearly offensive marks makes one wonder why these too were not cancelled or denied registration.
One reason may be that potentially scandalous and disparaging marks are viewed in the context of the goods or services and the market with which they will be associated. Consider that the goods and market of the porn industry are very different than the goods and market of an NFL team. MILFSDOPORN.COM may not be scandalous or disparaging in the context of providing adult entertainment.
Another reason may be that most of the unsavory marks listed in the team’s brief are unlikely “disparaging,” and would more likely fall into the “scandalous” category of Section 2(a). Section 2(a) excludes from registration marks that are scandalous and marks that are disparaging. The test for scandalous marks is different from that for disparaging marks.
Disparagement relates to a particular person or group. Some marks that have been denied as disparaging are HEEB and SQUAW for clothing. To determine whether a mark is disparaging, the test looks to whether a substantial composite of the group referenced by the potentially disparaging mark would find the mark disparaging in the context of the particular goods or services.
In contrast, potentially scandalous marks are viewed with respect to the broader public’s opinions. Marks such as COCAINE for soft drinks have been denied registration as scandalous. The test for determining whether a mark is scandalous looks to whether a substantial composite of the general public would find the mark scandalous in the context of the particular goods or services. Each test looks to a group of people to determine whether something is offensive, but the scandalous test looks to a larger and broader group, the general public.
TAKE YO PANTIES OFF, SLUTSSEEKER, MILFSDOPORN.COM, and many others on the team’s list would seem to fall under the more general “scandalous” category, because the terms do not seem to target a particular person or group in the way that a mark like REDSKINS does. (Surely MILFS are not an identifiable group.) Given that the scandalous test looks to the broad opinions of general public, rather than of a particular group, it may be an easier task to register a potentially scandalous mark than a potentially disparaging mark. Just ask The Slants.