— Jessica Gutierrez Alm, Attorney

This week’s Matal v. Tam (formerly Lee v. Tam) Supreme Court ruling serves as a reminder that free speech is a two-way street.  It also suggests the value of a sympathetic litigant, at least in terms of public response.

Many rallied behind Simon Tam and his rock band, The Slants.  The band members, who are all Asian American, sought to reclaim and diffuse a historically derogatory term by naming their band “The Slants.”  The band first tried to register THE SLANTS with the Trademark Office in 2010.  The Office rejected the application under the disparagement clause of the Lanham Act.  15 U.S.C. 1052(a).  The band appealed to the Trademark Trial and Appeal Board, and later to the Federal Circuit, which ultimately led to review by the Supreme Court.

The resulting narrative told the story of a group of young musicians pushed out by a bureaucratic system and an antiquated law dictating morality.  Tam and his band were the good guys.  There was no public outcry calling for the band to change its name.  They were not viewed as insensitive or bigoted, at least in part because Tam and the other band members are Asian American and thus belong to the group presumably disparaged by the term.  For many, it was easy to rally behind the argument that The Slants have a First Amendment right to obtain federal trademark protections for their band name.  The Supreme Court’s decision that “the disparagement clause violates the Free Speech Clause of the First Amendment,” thus removing The Slants’ block to registration, was a well-received public victory.  Matal v. Tam, No. 15-1293, 2017 WL 2621315, at *20 (U.S. June 19, 2017).

However, as many have since pointed out, this decision was a win not only for The Slants, but for anyone seeking federal registration of an otherwise disparaging mark.

In 2015, a federal district court affirmed the USPTO’s cancellation of THE REDSKINS registered trademarks.  At the time, the district court’s decision that “the federal trademark registration program is government speech and is therefore exempt from First Amendment scrutiny” was lauded as a moral victory.  Pro-Football, Inc. v. Blackhorse, 112 F.Supp.3d 439, 452 (E.D. Vir. 2015).  The New York Times Editorial Board reported, “Slurs Don’t Deserve Trademark Protection.”  The Supreme Court’s First Amendment decision means the NFL team will now be able to recover their federal registrations for THE REDSKINS.

The Slants and The Redskins each wanted federal trademark protections for racially derogatory terms, but presented entirely different political positions and applicants.

The long-fought battle over cancellation of the Redskins marks began with a group of Native Americans arguing disparagement.  In this narrative, the team’s owners were often depicted as the villains callously profiting from a racial slur.  The Navajo Nation filed an amicus brief in support of the decision to cancel the trademarks.  Media outlets and NFL announcers refused to use the team’s name in their reporting.  While many also saw The Redskins as leading the charge in the fight against political correctness, The Redskins undeniably faced stronger public opposition than The Slants.

The differences in these cases, and in the  trademark applicants themselves, serve as a reminder that free speech for one necessarily means free speech for all.  Perhaps nothing underscores this point better than the New York Times Editorial Board’s recent statement that they have “reconsidered [their] underlying position” with respect to the team’s name following the Tam decision.

While many will surely still advocate for a new team name, if we are to allow The Slants to enjoy the benefits of federal registration, we must allow The Redskins–and others–the same opportunity.

Justice Kennedy said it best: “A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all.  The First Amendment does not entrust that power to the government’s benevolence. Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society.”  Matal v. Tam, No. 15-1293, 2017 WL 2621315, at *25 (U.S. June 19, 2017) (Kennedy, J. concurring).

In a case with special significance to our DuetsBlog crew (our founder Steve Baird started the fight to cancel the THE REDSKINS trademark registrations in 1992 – see more about the Harjo case here) and significant to trademark practitioners and owners alike, the federal government is asking the United States Supreme Court to deny the Washington Redskins’ request to skip over the appellate court and go directly to its Court to have this dispute decided.  I will refer to the Washington Redskins as the “Team,” although unlike my good friend Craig, my team will always be the Vikings.

By way of background, the highly publicized Pro-Football Inc. v. Blackhorse, No. 15-1311, case was filed by the Team to avoid cancellation of its trademark registrations for THE REDSKINS mark.  Losing at the Eastern District of Virginia, the Team wants to skip the normal path of letting the Fourth Circuit hear the dispute, and instead asked the Supreme Court to hear the case directly.  The Team relied on the following arguments for this unusual request:

  1. The Court often grants certiorari before judgment to consider companion cases together (in this case it is the Tam case involving the Slants rock band);
  2. The Team’s case is an ideal companion to Tam and essential to resolve the constitutionality of the Lanham Act’s §2(a); and
  3.  The Team is better situated to challenge §2(a)’s constitutionality (in effect our lawyers are better or more well-funded and were relied upon by the Federal Circuit).

The government asserted that there was no valid reason to allow the Team to bud to the front of the line and skip over the Fourth Circuit.  In other words, there was no “reason to deviate from the [C]ourt’s usual practice of deferring any review until the court of appeals has issued its decision.”  The government slammed the Team stating that “Petitioner’s confidence in its own attorneys’ litigation skills provides no reason to take the extraordinary step of granting certiorari before judgment.”  Plus, Tam’s attorneys are really good attorneys themselves.

Not surprisingly, the Native Americans, who won at the district level, agreed with the government and added that if the Court did grant the Team’s petition it should only do so to answer the First Amendment questions, not the other challenges that they have asserted to THE REDSKINS registrations.

This Washington Redskins case and the Tam case have widespread interest because if the Supreme Court agrees with the Federal Circuit’s decision in Tam, then the provision in the 70 year old Lanham Act preventing the registration of disparaging trademarks will be found unconstitutional as violating the First Amendment.  There are wide-reaching implications for this decision.

With the death of Justice Scalia, there are only eight Justices currently on the high Court.  If there is a split decision, then the lower court’s decision stands.   I suppose I am putting the cart before the horse as the Supreme Court has not yet granted certiorari on the Tam or the Team’s case.  However, I would be shocked if the Court does not do so.  This issue is as exciting as the Super Bowl (at least for trademark attorneys).

Yesterday the Federal Circuit issued its decision in In re Tam, an appeal filed by a musician whose application to register the mark THE SLANTS had been refused registration on the ground that it was disparaging to Asian Americans. The Trademark Trial and Appeal Board (TTAB) relied on the same provision to cancel the registrations for the REDSKINS trademarks owned by the Washington D.C. NFL franchise.  The applicant in Tam appealed, arguing that the provision violated the First Amendment. The Federal Circuit agreed and struck down the provision as unconstitutional.

The specific provision at issue is Section 2(a) of the Lanham Act, codified at 15 U.S.C. Section 1052. The provision provides, in pertinent part:

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 [c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute[.]

The decision – all 105 pages – presents a number of interesting legal issues to explore. We’ll analyze the substance of the decision in the coming days, weeks, and months. However, the most interesting aspect is not what the decision says, but where the decision may go. The In re Tam decision directly conflicts with the Eastern District of Virginia ruling in Pro-Football v. Blackhorse, which upheld the TTAB’s ruling cancelling the REDSKINS trademark.

In Blackhorse, the court concluded that the provision did not implicate the First Amendment because a lack of registration does “not burden, restrict, or prohibit  [the] ability to use the marks.” However, the Federal Circuit disagreed. It concluded that the denial of a registration “creates a serious disincentive to adopt a mark which the government may deem offensive or disparaging.” The Blackhorse court also found that the registration of trademarks constituted government speech, making it exempt from First Amendment challenges. The court reasoned that, in denying registration to disparaging marks, the Trademark Office is “exercising editorial discretion.” The Federal Circuit disagreed, instead concluding that the issuance of registrations was merely a regulatory activity: processing trademark applications into registrations. The Washington Redskins have appealed the district court’s decision to the Fourth Circuit.

Given that the Tam decision invalidates a federal statute, there is a good chance that the Supreme Court will decide to review the decision. However, a review will be all but guaranteed if the Fourth Circuit upholds the District Court’s decision, resulting in a circuit split.  That case is still in the briefing stage and no oral arguments have yet been scheduled. As a result we’re not likely to have a decision until the fall of 2016 at the earliest.  It’s going to be harder that waiting to open Christmas presents…

The possibility of a long overdue name change for the Washington Redskins is trending on Bing at the moment.

I’m glad to see the pressure continue to mount. I’ve always said, it is only a matter of time, hopefully sooner than later.

Check out the coverage on the Huffington Post, WUSA, Christian Science Monitor, and BusinessWeek.

Remember my post on the subject from three years ago?

“Re-Branding Madness in Washington” Overlooks Obvious: The Washington Redskins

What do you think, is the proposed Redtails name a good alternative?

UPDATE: ESPN Interview of D.C. Councilman David Grosso, “We need to be on the right side of history.”

Today, the U.S. Supreme Court declined to hear the requested appeal of Harjo v. Pro-Football, Inc., the nearly two-decade old trademark case seeking cancellation of the U.S. Trademark Registrations owned by the NFL franchise in the Nation’s Capitol. In doing so, the highest Court in the land, has permitted the laches ruling to stand. Basically, permitting dismissal of the action given a perceived "unreasonable delay" by the Native American Petitioners in bringing the trademark challenge, despite clear language in the Trademark Act permitting such challenges outside the typical five year statute of limitations, and specifically indicating they can be filed "at any time."

My prior involvement in filing the case back in 1992, the victory we all enjoyed in 1999, and my admittedly rather critical coverage of the dismissal of this historic and ground-breaking case may be found here (9/17/09) and here (May 21, 2009).

Although many ironies may be highlighted from this odd conclusion to the Harjo case, certainly one of the most striking ironies is that it took far longer for this case to wind its way through our legal system than the accused delay by Mateo Romero, the youngest of the original Native American Petitioners, led by Suzan Shown Harjo.

Be that as it may, the torch has been passed to a brand new generation of Native American Petitioners, eager to have the case decided on the merits. The "new" case filed by Amanda Blackhorse and others, more than three years ago, was promptly suspended, pending the final outcome in the Harjo case. Now that the Harjo case has concluded, the Blackhorse case will proceed before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office, the same admininstrative body that found in favor of Harjo’s disparagement claim in 1999.

Moreover, the TTAB appears to have read the news accounts and just today issued an order, indicating that if the parties to the Blackhorse proceeding don’t advise it of the status of the Harjo case within thirty days, it will automatically resume the Blackhorse proceeding and issue a new scheduling order to move the case forward, so stay tuned.

OK, here is my prediction. Some day, I don’t know when, justice will prevail, and some talented branding guru will make a tidy sum re-naming and re-branding this offensive NFL franchise name that could have and should have been re-named long ago.

Back in May, I wrote a piece entitled “Re-Branding Madness in Washington” Overlooks Obvious: The Washington Redskins,” discussing the trademark cancellation action that I filed on behalf of seven prominent Native American leaders back in September 1992 (Harjo et al v. Pro-Football, Inc.), and calling for the football team to “hire a branding guru to engage in some serious and successful re-branding.”

Well, the 2009 football season is now upon us, and it appears my re-branding call has fallen on deaf ears, at least for now.

Yesterday the Washington Post “reported” the case may be heard by the U.S. Supreme Court.

What I found most interesting about the brief 197 word story in the Washington Post is that the “reporter” used the word “activist” three times and “group” twice, to describe the distinguished Native American leaders I know, without referring to them as individuals or even as being Native American (without the “activist” pejorative), leading me to wonder what yard-line his seats might be located at in FedEx Field.

For what it’s worth, at least the Associated Press, ABC News, NBC Sports, ESPN, Yahoo News, WTOP.com, WUSA9.com, New York TimesNew York Post, Miami Herald, San Francisco Chronicle, Seattle Times, Sports Illustrated, The Washington Times, and CBS News, have all managed to report the story without employing the highly-charged and politically-loaded term “activist,” instead neutrally referring to the petitioners as “Native Americans” and “American Indians,” who are offended by the team name.

Re-branding occurs all the time.

Re-branding occurs in business. Remember when Bell Atlantic became Verizon? Andersen Consulting became Accenture? How about when Philip Morris became Altria?

Re-branding occurs in politics too. Just days ago, Judson Berger discussed a kind of “re-branding madness” consuming Washington, D.C. right now: “Terrorist attack is out. — ‘man caused disaster’ is in.” Our friends at Catchword Branding had a lot of fun with the political re-branding of Swine Flu.

Re-branding even occurs in the world of professional sports. Remember when the NBA franchise Washington Bullets became the Washington Wizards in 1997 out of concern that the Bullets name of some twenty-three years (1974-1997) had acquired “violent overtones”.  How about the recent re-branding from the Seattle Supersonics to the Oklahoma City Thunder? Even the NFL has decided to recognize Cincinnati Bengal Chad Johnson’s re-branding to Ocho Cinco.

Re-branding changes, according to Wikipedia, are “usually in an attempt to distance [the brand] from certain negative connotations of the previous branding.” So, given the widespread meaning and understanding of “redskin” as “offensive slang” and that it is “used as a disparaging term for a Native American,” given the pain the term has caused, and given that the team’s helmets sport a Native American profile and not a certain variety of spud on them, why won’t the Washington Redskins get on the re-branding bandwagon in our nation’s capital? After all, even one of the attorneys at the same law firm hired by the team apparently has spoken out, read about the details here.

Continue Reading “Re-Branding Madness in Washington” Overlooks Obvious: The Washington Redskins

Never is supposed to last forever. Forever is never supposed to come to an end. Neither are possible to measure in time, for as long as they continue to be true.

The wait for either to fail, can last for an infinite period of time, until they collide. We have witnessed such a collision during the past week in our Nation’s Capital.

Despite majority owner Daniel Snyder’s 2013 promise to “NEVER change it, the Washington R*dskins NFL franchise team name is about to become history.

Speaking of history, 25 years before Snyder’s promise, previous owner Jack Kent Cooke conveyed basically the same message, but he used more words to do so:

“There’s not a single, solitary jot, tittle, whit chance in the world” of a name change. “I like the name and it’s not a derogatory name.”

More than fifteen years before that in 1972, then team owner Edward Bennett Williams, met with a group of Native American leaders to hear their objections, yet the name survived; only fight song lyrics and cheerleader uniforms changed.

A decade before that in 1962, George Preston Marshall, founder and owner of the team for nearly forty years, finally agreed to allow African Americans on the team, but only after the federal government threatened to block continued use of the D.C. stadium located on federal land; before that he’s reported as proudly saying:

“We’ll start signing Negroes, when the Harlem Globetrotters start signing whites.”

With that awful history and dogged grip on the indefensible name, the arrival of NEVER and the end of Forever for the the R-Word brand name is long overdue.

On Juneteenth 2020, the George Preston Marshall statute at RFK Stadium was removed and taken away, but only after it was defaced and spray-painted red.

Only Mr. Snyder knows the true tipping point for the inevitable name change that insiders say will follow a “thorough review,” and the timeline to effectuate it.

Most suggest the tipping point was when the sponsors spoke up, starting with FEDEX on July 2, the day before the team announced the “thorough review.”

Presumably the “thorough review” won’t require revisiting dictionary evidence of the racial slur, or re-examining the mountain of evidence and legal briefs against the name, during the Harjo and Blackhorse cases, spanning a quarter of a century, or the two TTAB decisions and one federal court finding disparagement.

Instead, the “thorough review” more likely signals to impatient sponsors that change is coming; and as news reports continue to pour in, it appears that the team is unlikely to use Native American imagery as part of the new brand name.

As you know, I’ve been passionate on this issue always maintaining a name change for the team was only a matter of time; it appears that time is finally here.

As loyal readers will recall, more than a decade ago, I published this observation:

‘Re-Branding Madness in Washington’ Overlooks Obvious

Then in 2017, I wrote the following, in a long overdue tribute to Suzan Harjo:

“[I]n the end, it is about the money, and the NFL clearly has had sufficient funds to defend the indefensible for a quarter century now, so isn’t it time FEDEX and other NFL sponsors step up and get on the right side of this issue, with their money? Let’s all follow the money.”

What we have witnessed within the last week demonstrates not only a dramatic continuation of the racial justice movement spanning the world, but the extraordinary power of brands and the sponsorship dollars they invest, and perhaps as importantly, the power of those who choose to invest in those brands.

Daniel Snyder surely meant NEVER to mean forever, but in 2013, he could not have foreseen how quickly the world has changed over the last six weeks.

Most of the focus now appears to be on what the new name will be. One report suggests the Washington Warriors, without Native American imagery. Good luck.

Another suggests the Washington Redtails, in honor of the Tuskegee Airmen who fought in World War II. If so, Above the Law has identified a trademark problem.

How likely is it that Snyder’s current “thorough review” is focused on the idea of NEVER moving from the frying pan into the fire? If so, that could take Forever.

UPDATES:

USA Today reports team will announce name change today, Monday July 13, 2020.

It’s official, the team has confirmed retirement of the name and logo, and the announcement of a new name will follow, to last for the next 100 years.

Yesterday in Seattle — where nearly 11,000, sleepless, brand protection, trademark, and IP professionals from 150 countries have registered and converged for INTA’s 140th Annual Meeting — yours truly had the distinct pleasure of sharing some thoughts on the intersection between federal trademark registration and Free Speech. Here are some before, during and after pics:

Before:

 

During:

 

 

After:

Steve Baird, Amanda Blackhorse, Joel MacMull, Simon Tam
Professor Lisa Ramsey, Steve Baird, and Professor Christine Haight Farley whispering in Steve’s ear

Highlights:

Amanda Blackhorse:

Message to Daniel Snyder: “You cannot force honor on someone.”

Steve Baird:

“Federal trademark registration is a giant exception to Free Speech.”

Other messages drawn from here, here, here, here, and here.

Simon Tam:

Interpreting USPTO: “They said we were too Asian!”

Joel MacMull:

The Tam case never should have been decided on Constitutional grounds!

Great questions from the engaged crowd, wish there had been much more time!

What were your highlights from the panel discussion?

UPDATE: Simon Tam, writing about Paper Justice, here.

— Jessica Gutierrez Alm, Attorney

Simon Tam wasn’t the only one barred by the Lanham Act from reclaiming a historically derogatory term.

Dykes on Bikes is a nonprofit lesbian motorcycle organization.  According to their website, the group’s mission is to “support philanthropic endeavors in the lesbian, gay, bisexual, transgender, and women’s communities, and to reach out to empower a community of diverse women through rides, charity events, Pride events, and education.”  In 2015, Dykes on Bikes tried to register their logo as a service mark for entertainment.  The application was put on hold pending the outcome of Matal v. Tam, as the Supreme Court considered whether Simon Tam could register his band name—The Slants.  In view of the Court’s landmark decision holding the disparagement provision of the Lanham Act unconstitutional viewpoint discrimination, Dykes on Bikes will move forward with its trademark application as well.

It was in 2003 when Dykes on Bikes first sought to register the name of their organization as a service mark for education and entertainment services.  Registration was refused on the basis that the mark was disparaging to lesbians.  The organization appealed to the TTAB, arguing that the word “dyke” had become a positive term and a symbol of pride and empowerment.  Dykes on Bikes won their appeal before the TTAB.  But when the mark was published for opposition, an individual named Michael McDermott filed an opposition claiming the mark was disparaging to men.  Ultimately, McDermott’s opposition was dismissed for lack of standing.  In particular, McDermott failed to show either (1) he possesses a trait or characteristic implicated by the proposed mark; or (2) others share the same belief of harm from the proposed mark.  The TTAB dismissed McDermott’s opposition and the Federal Circuit affirmed.  DIKES ON BIKES was successfully registered in 2007.

Because they had already won the disparagement battle for their first mark, Dykes on Bikes was surprised to face another disparagement refusal for a second mark.  In 2015, the group sought to register their logo as a service mark.  They sought review by the TTAB, and the case was put on hold pending the outcome of Matal v. Tam.  Dykes on Bikes also filed an amicus brief in the Tam case, arguing in favor of Tam’s position.  After the Supreme Court held in Tam that “the disparagement clause violates the Free Speech Clause of the First Amendment,” the DYKES ON BIKES W M C logo was approved for publication.

Dykes on Bikes and The Slants had similar goals.  As Dykes on Bikes described in their amicus brief, both groups “have chosen to reclaim self-referential terms as trademarks for the benefit of the groups those terms refer to.”  They also drew a distinction with respect to a certain NFL team name: “the Washington Redskins have chosen a term that is unrelated to the people who identify as members of the football team and is commonly understood to be a slur which members of the identified group have not reclaimed.  Whatever the constitutionality of the PTO’s treatment of the Redskins mark, the team’s use of that name is immoral and Dykes on Bikes encourages the Washington Redskins to give up their trademarked name as a matter of respect and decency.”

While the Tam decision may have opened the proverbial flood gates of offensive trademark applications, it also allows for these positive trademark uses in reclaiming derogatory terms.