Today marks the 25th anniversary of the filing of the petition to cancel the R-Word registrations held by Pro-Football, Inc., the NFL franchise playing near the Nation’s capital.

Indian Country Today has published an interview with Suzan Shown Harjo, lead petitioner in Harjo et al v. Pro-Football, Inc., and organizer of Blackhorse et al v. Pro-Football, Inc.

Thanks to Indian Country Today and Suzan Shown Harjo for sharing this interview. Its documentation of history is so important for anyone who cares where we’ve been as a country and where we’re headed; it is valuable and timeless, powerful and compelling.

I’m so thankful to Suzan for the opportunity to play a small part in this long yet unfinished history, and here is a photo of us together on May 15, 2015, at a conference in Hinckley, Minnesota, during a celebration honoring her lifetime of advocacy for Native peoples:

Suzan’s heretofore and ongoing work is truly remarkable and a testament to who she is, even in the face of ignorant vitriol, and to how many lives she has touched and continues to touch in such a profound, generous, and meaningful way.

As I reflect on the historic petition to cancel we filed together on September 10, 1992, one thing I can’t get out of my mind is the national press conference question I answered from the Washington D.C. press corps, something like “what about the First Amendment?”

As I recall, my response was, something like, the beauty of this cause of action is that the First Amendment is not implicated because removing the federal government’s erroneous approval of the racial slur doesn’t compel the team to change the name, having said that, it is of course our hope that the team does the right thing and pick another name.

Who could have guessed it would take nearly a quarter century to reverse prior court of appeals precedent (McGinley) saying Section 2(a) did not violate Free Speech or the First Amendment, and then to have the Supreme Court agree that refusing federal registration of disparaging matter under Section 2(a) of the Lanham Act is viewpoint discrimination and a violation of Free Speech.

Thankfully much awareness has been raised and good has been done over the past quarter century, while the NFL and Washington franchise double down together on their joint investment to retain exclusive rights in a racial slur.

Hopefully with increased awareness raised and the movement and pressure continuing, we won’t have to wait another quarter century for justice and clearer thinking on this issue by the NFL, FEDEX, and other NFL sponsors, if not Daniel Snyder himself.

As I reflect back a quarter century ago, to the day, it was never about banning the team’s Freedom of Speech, it was about removing the federal government’s approval of a racial slur as a federally-registered trademark, and providing team ownership with a financial incentive to reconsider their choice to ignore the obvious, as Suzan has noted:

“We liked the approach of a pocketbook incentive case that did not force a name-change, but counted on the greed of the team owner to drop the name if exclusive federal trademarks were cancelled.”

“The pocketbook approach put things squarely where pro sports differed from educational sports: money. In most name and symbol changes made in educational sports, we had a way of discussing the issues and solutions, because there almost always were educators and officials who genuinely cared about the well-being of the students. In pro sports, even the health and safety issues seemed focused on liability and not on human beings, and some paid fans seemed physically provocative, while others seemed orchestrated online to attack and defame those of us who were challenging the NFL franchise in orderly legal forums.”

“Another reason I liked the pocketbook approach was that it didn’t impede anyone’s free speech. I was at WBAI-FM  in 1973, when the “seven dirty words” case started down the road to the Supreme Court’s 1978 ruling against free speech. The free speech flagship station of the Pacifica network, WBAI aired a cut from Comedian George Carlin’s “Class Clown” album and a listener complained to the Federal Communications Commission that his young son was wrongly exposed to dirty words. George Carlin’s “Seven Words You Can Never Say on Television” was based on an earlier routine by Comedian Lenny Bruce that was an excuse for one of his many arrests and jailings for using dirty words. The upshot of FCC v. Pacifica Foundation was that the federal government can restrict free speech in certain instances, the opposite of the Court’s 2017 ruling in The Slants case against the PTO, which rendered part of the trademark law unconstitutional as violative of the First Amendment. We never thought we were violating the NFL’s freedom of expression by using the same section of the trademark law.”

Ironically, as team owner Daniel Synder freely and proudly admits, the team’s ability and commitment to continue using the name will never change, even in the face of the mountain of evidence demonstrating its offensiveness and meaning as a racial slur, and even in the face of losing on the merits three times (twice at the TTAB, once at the E.D. Va.), or more.

So much for the Supreme Court’s concern that Section 2(a) actually chills Freedom of Speech, because according to Snyder, even after losing on the merits he has reaffirmed: “We will never change the name of the team,” “It’s that simple. NEVER — you can use caps.”

So, in 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.

Here’s to you Suzan, be well, Aho.

Daniel Snyder, NFL owners, FEDEX, and other NFL sponsors, take note, breaking news from courageous Neal M. Brown, Ed.D., Head of School, Green Acres School in Bethesda, Maryland, about twenty miles from FEDEX Field:

“[T]he term ‘Redskin’ is a racial slur. Its use, whether intentional or not, can be deeply insulting and offensive. It is a term that demeans a group of people. Similarly, the team’s logo also can reasonably be viewed as racially demeaning. At best, the image is an ethnic stereotype that promotes cultural misunderstanding; at worst, it is intensely derogatory.”

“As such, having students or staff members on campus wearing clothing with this name and/or this team logo feels profoundly at odds with our community’s mission and values. We pledge in our Diversity Statement to foster both ‘an inclusive and uplifting community’ and ‘a sense of belonging for everyone in the Green Acres community.’ Similarly, our Statement of Inclusion calls upon us to ‘welcome people of any race, national, or ancestral origin,’ among other social identifiers. Further, as our guidelines for ‘appropriate dress’ in the Community Handbook require students to ‘dress in ways that demonstrate respect for others,’ we cannot continue to allow children or staff members—however well intentioned—to wear clothing that disparages a race of people.”

“I ask that you please not send your children to school wearing clothing with either the team name or logo in the year and years to come. I will be speaking with students to share with them my decision and to enlist their understanding and support. Additionally, we invite you to reach out to us with any questions you may have about how to discuss this with your child.”

Again, not so fast, Mr. Snyder, the R-Word is looking awfully scandalous these days, and this issue isn’t going away . . . .

See coverage from USA Today, Washington Post, Washington Times, and Sports Illustrated.

UPDATE from Time: The NFL Needs to Stop Promoting a Racial Slur

Lee Corso (former coach and ESPN football analyst) frequently utters this famous sports media catchphrase on ESPN’s “College GameDay” program: “Not so fast, my friend!

The first three words of that phrase come to mind upon hearing that THRILLED Daniel Snyder (majority owner of the NFL football franchise nearest the Nation’s Capitol) is celebrating Simon Tam’s (and Tam’s talented lawyers’) recent victory at the Supreme Court.

Excluded are the last two words as inapplicable, as I’ve never met Mr. Snyder, so I can’t say he’s my friend, and if even a small fraction of what Rolling Stone says about him is true, friendship seems unlikely, unless of course, he engages the services of an expert to rebrand the franchise (without the racial slur), something I asked for eight years ago.

Yet, “not so fast,” as a week ago, the government filed a brief with the Court of Appeals for the Federal Circuit, asking the Federal Circuit to affirm the TTAB’s refusal to register FUCT based on the scandalous portion of Section 2(a) of the Lanham Act, despite Tam.

The Department of Justice further contends that the Supreme Court’s ruling in Tam does not implicate the First Amendment in terms of scandalous matter, because unlike the stricken disparagement portion of 2(a), the remaining scandalous portion is viewpoint neutral.

To the extent the Justice Department prevails and the current bar on registration of “scandalous” matter survives First Amendment scrutiny with the Federal Circuit’s review in the Brunetti case, this could impact Daniel Snyder’s currently suspended R-Word trademark applications (here, here, and here), and the NFL’s suspended Boston Redskins application.

While the decades-old R-Word registrations challenged in Harjo and Blackhorse appear safe from cancellation given the ruling in Tam, what stops others from opposing registration of any future R-Word applications (or any of the currently suspended applications, if published) as containing scandalous matter in violation of Section 2(a) of the Lanham Act?

If the scandalous bar to registration survives First Amendment scrutiny, opposers (unlike cancellation petitioners) would have the significant benefit of only needing to show (at the time of an opposition decision) that the current R-Word applications have scandalous matter.

It’s a question of the timing of proof necessary, in other words, no time machine would be required to determine how the relevant public perceived the R-Word marks back in the late 1960s when the first R-Word registration issued for the team; those would not be at issue.

It’s also a question of who comprises the relevant public. For disparaging matter, it was Native Americans. For scandalous matter, it would be the general public, although not necessarily a majority, but instead a “substantial composite of the general public.”

The Act’s present prohibition on the registration of scandalous matter reaches matter that is “shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation.” Wouldn’t unambiguous racial slurs qualify for this treatment?

Who’s ready to carry the next, but new flame, if needed, to oppose registration of any R-Word applications that publish for opposition, contending that a substantial composite of the general public finds the applied-for marks “shocking” to their sense of propriety and/or “offensive” to their conscience?

Even those who fought hard to undue the disparagement provision of Section 2(a) for Simon Tam, see Daniel Snyder’s team name in a very different light, and let’s also say, not a very sympathetic light. And, the general public today is not the public from 50 years ago.

Finally, given the vast public attention and support this issue has received over the last quarter century, it would be more than interesting to see what kind of a record could be developed on the scandalous ground for registration refusal, today, and not decades ago.

So, not so fast, let’s see what happens to the scandalous portion of Section 2(a) in Brunetti, before allowing Daniel Snyder to celebrate Tam too strongly, my friends.

UPDATE: The NFL’s Boston Redskins trademark application has been removed from suspension, reports Erik Pelton, so, who will oppose if published, and why hasn’t the USPTO issued a new refusal on scandalous grounds yet?

Last week the U.S. Supreme Court agreed to hear Mr. Simon Tam’s arguments and review the Court of Appeals for the Federal Circuit’s majority decision striking as unconstitutional Lanham Act Section 2(a)’s bar against the federal registration of disparaging matter, so it will decide the following issue, once and for all:

“Whether the disparagement provision of the Lanham Act, 15 U.S.C. 1052(a), which provides that no trademark shall be refused registration on account of its nature unless, inter alia, it “[c]onsists of . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” is facially invalid under the Free Speech Clause of the First Amendment.”

As you may recall, Tiffany previously wrote how Dan Snyder’s Washington D.C. NFL franchise asked to have its district court loss and appeal jump over the 4th Circuit Court of Appeals to go directly to the Supreme Court, if the Court were to decide to hear the Tam case.

As much stock as the team has put in the constitutional challenge to defend its several R-Word registrations, found offensive and disparaging to Native Americans, I suspect Mr. Snyder and his lawyers don’t relish the idea of sitting on the sidelines while Mr. Tam’s counsel argues the constitutional issue to the Court.

Earlier today the Supreme Court denied the team’s request, so Snyder’s team of lawyers will have to sit out for that important oral argument, although I suspect they’ll be one of many to submit a written amicus brief, as a “friend of the court.”

Why doesn’t Dan Snyder instead focus on being another kind of friend and get on the right side of history? And, doesn’t Mr. Snyder’s refusal to ever consider a name change, even after losing the registrations, actually undermine his Free Speech challenge?

As you know, my view is that Section 2(a) of the Lanham Act should be upheld as constitutional:

Stay tuned for more and let’s hope that Georgetown Law School Professor Rebecca Tushnet’s insights on the constitutionality of Section 2(a) carry the day at the Court.

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…

— Jessica Gutierrez Alm, Attorney

TJ Root/Getty Images

 

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.

Last Friday, both slanted arguments and red herrings were present during the 90 minute en banc oral argument before the Court of Appeals for the Federal Circuit (CAFC) in In re Tam.

The question invited by the CAFC to be addressed in Tam is whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of trademarks that consist of or comprise matter that may disparage persons violates the First Amendment.

The CAFC previously had affirmed the Trademark Trial and Appeal Board’s decision in Tam upholding the USPTO’s refusal to federally-register THE SLANTS mark for “entertainment in the nature of live performances by a musical band,” concluding that when used in connection with applicant’s services, THE SLANTS would be perceived as disparaging to a substantial composite of the referenced group — persons of Asian descent, violating Section 2(a) of the Lanham Act.

After vacating that decision, now, the CAFC is asking whether Congress even has the power to refuse registration of a trademark consisting of or comprising matter that may disparage persons. And, although the court didn’t specifically ask for briefing on whether the scandalous and immoral portions of Section 2(a) must fall too under the same First Amendment theory, the lawyer for the American Civil Liberties Union, who was permitted 10 minutes of oral argument, as amicus curiae, encouraged the court to “embrace” that idea.

Although I have already shared some thoughts on the subject, here, after springing out of my chair a few times while listening to the audiotape of the Tam oral argument, I couldn’t resist sharing a few more thoughts on the subject. Some now, more later.

One of those jarring moments was when Circuit Judge Kimberly Ann Moore, the initial Tam panelist who appeared to spearhead the sua sponte Constitutional review en banc, consistent with her “additional views” appended to the original panel affirmance, asked our friend Ron Coleman (counsel for Mr. Tam) about how the court’s decision would impact the federal government’s copyright registration system.

This led to an unfortunate diversion and a substantial amount of time devoted to the purely academic question of whether Congress could amend the Copyright Act to add a disparagement provision that refuses registration of copyrights on that basis. It seems to me, this kind of question, assuming it is even relevant to the analysis, deserves far more than shoot from-the-hip responses, but since that is what was sought in oral argument, I’ll offer a few thoughts off the top of my head, instead of from the hip.

To my knowledge, correct me if I’m wrong Ron, but Congress has never forbidden and has no plans to forbid copyright registration to disparaging works of authorship, so a parade of horribles based on this fear seems misplaced. And the underlying premise and multiple suggestions during the oral argument that trademark should be treated like copyright is certainly not the law, not obvious, and the premise has multiple flaws, it seems to me.

First, copyright and trademark flow from very different origins and have very different purposes. Copyright protection flows from an express provision in the U.S. Constitution, whereas federal trademark protection flows from the very general Commerce Clause language permitting Congress to make laws affecting interstate commerce. In fact, Congress’ first attempt to create a federal trademark regime in 1870 failed, and was struck down by the Supreme Court, because it improperly relied upon the Copyright Clause of the U.S. Constitution for its authority.

Federal copyright law is preemptive and as a result States cannot seek to protect copyright under State law. Not so with trademark protection, there is no preemption, so States are free to and do protect trademark rights at the State level.

Moreover, a prerequisite to any enforcement of a copyright is federal registration, but again not so with trademarks, unregistered marks may be protected by the States at common law.

Moreover, in terms of Congress’ legitimate interest in discouraging all sorts of confusion in the marketplace, it is reasonable and accurate for the public and potential consumers to infer governmental approval of a trademark when the federal registration symbol (®) is used, because it is unlawful to use it without first having obtained a Certificate of Registration for the mark in question. But again, not so with copyright — there is no prohibition on the use of the copyright registration symbol (©) and there is no registration requirement in order to use it.

In terms of the governmental speech argument there are material differences there too. A trademark registration certificate, when issued by the federal government has its name and fingerprints all over it, positioned immediately adjacent to the approved mark in question. On the other hand, when a copyright registration issues, the material subject to copyright protection does not appear anywhere on the certificate, nor is it even attached to the certificate.

So, to suggest that all forms of IP (copyright, patent and trademark) should be treated the same ignores the careful balance that Congress struck over the last century and longer in legislating unique protections and limitations for each form of intellectual property.

There is so much more to say, but I’ll have to circle back for the rest later, sorry duty calls.

Remember a while back when many were humming to the tune “What Does the Fox Say“?

Today, I’m asking, what does the trademark registration say? Not, what does the trademark say — that is a different and more complicated question, depending on the specific mark, but at a minimum, answering that question involves the meaning and attributes of the underlying brand.

The trademark registration — as opposed to the trademark itself — is a piece of paper issued by the federal government with its literal and figurative signatures and fingerprints all over it.

There is no question that a trademark communicates information about an underlying brand, but the Certificate of Registration communicates something quite different — the piece of heavy stock paper with the words in fancy script “United States of America” and “United States Patent and Trademark Office,” across the top, and the golden Official Seal of the USPTO (including a reference to the Department of Commerce) located in the lower left hand corner of the Certificate of Registration, also appearing above the signature of the Director of the USPTO (who is also Under Secretary of Commerce for Intellectual Property), an employee of the federal government and principal advisor to the President of the United States — what this valuable piece of paper communicates is an official act of the federal government that it has examined and approved the trademark for federal registration and exclusive protection in United States commerce.

By way of example, in all its glory, remember this little gem from the archives:

DuetsBlogRegistration

Although the USPTO certainly got it right with our registration, there are times when the USPTO makes a mistake and is asked later to correct it. The United States District Court for the Eastern District of Virginia recently corrected the USPTO errors from decades ago in improperly issuing federal registrations for a racial slur, in violation of Section 2(a) of the Lanham Act. So, as we know from the Washington football NFL franchise’s continued fight to keep the R-Word, the USPTO hasn’t always gotten it right from the outset, and since we’re talking about important matters of public policy here, Congress determined long ago that there is no statute of limitations on getting it right, petitions to cancel on these public policy grounds can be brought “at any time.”

So, when the issuance of a trademark registration would violate public policy, on disparagement, deceptiveness, or other public policy grounds, under current law, the federal government (i.e., The United States Patent and Trademark Office, part of the United States Department of Commerce) is required to refuse registration under Section 2(a) of the Lanham Act. Issuing a Certificate of Registration is the federal government saying, the trademark in question, doesn’t violate any of these statutory bars. And, when the statutory bars are violated, the federal government must refuse registration on Section 2(a) grounds, yet the trademark applicant is free to continue using the trademark in commerce, the right to use is not negated.

As you will recall, some are working hard to have the disparagement bar on federal registration of trademarks found unconstitutional on First Amendment grounds, contending that revoking the government-issued trademark registrations chills their freedom of speech. Those arguments failed in the Eastern District of Virginia, so let’s all stay tuned for how the Court of Appeals for the Fourth Circuit handles them, as it reviews the Eastern District of Virginia decision, and let’s all stay tuned for when the same arguments are made in another case involving another racial slur involving Asian Americans, before the Court of Appeals for the Federal Circuit later this year.

In the end, because the federal government’s act of registration and issuance of a Certificate of Registration, communicates the federal government’s approval of the trademark as being suitable and appropriate for federal registration and protection, the trademark registrations in question involve no speech by the trademark owner, the valuable pieces of paper are purely and 100% governmental speech, taking them outside First Amendment scrutiny. I’m thinking that efforts to conflate the communicative value of a trademark and underlying brand (admittedly the trademark owner’s speech) with the trademark registration itself (the government’s speech about the trademark) will prove unsuccessful.

What do you think?

Last week the NFL franchise that plays football nearbut not in — our Nation’s Capital, was dealt another significant legal and public relations blow that would have any rational brand owner working overtime on its re-branding efforts.

Professor Christine Haight Farley, at American University’s Washington College of Law, summarizes the Amanda Blackhorse decision here. And, our friend John Welch over at the TTABlog describes it as an “impressive opinion by Judge Lee” of the Eastern District of Virginia.

The timing couldn’t have been better, given the topic of discussion this past weekend at the 2015 National Native Media Conference in Washington, D.C. on “Race, Journalism and Sports: The Dilemma of the Washington NFL Team Name.

It was an honor to share the panel table with such an amazing and impressive group to discuss this important topic, including Presidential Medal of Freedom recipient Suzan Shown Harjo (President of The Morningstar Institute), award-winning journalist Tristan Ahtone, Christine Brennan (Sports Columnist at USA Today), Mark Memmott (Supervising Senior Editor, Standards & Practices at NPR), and Professor of Law Christine Haight Farley (American University, Washington College of Law).

Keith Woods, NPR’s VP for Diversity in News and Operations, did a fabulous job of moderating the lively panel discussion and questions from those in attendance. After the ninety minute panel discussion with Q&A, Mr. Woods incite-fully concluded, noting the team’s actual name — a recognized racial slur — had only been said twice, yet it wasn’t difficult to avoid using it, and in doing so, no meaning was lost in the process. So, let’s all just stop using it.

From the legal perspective in Blackhorse, once the team has exhausted appeals, and the decisions to cancel the federal registrations containing the racial slur have been affirmed, the team will no longer be able to use the federal registration symbol — ® — because the revocation of the federal government’s previous and improper imprimatur and approval of it will be final.

Another consequence, among others, will be that the federal registrations containing the racial slur, currently recorded with U.S. Customs and Border Protection, for the purpose of preventing counterfeits from entering the country, will be a nullity and removed from recordation.

My question, why aren’t they a nullity already? The two registrations that purport to protect the racial slur, are service mark registrations, not trademark registrations — they only cover entertainment services, no clothing, no merchandise.

In addition, the team currently has no federal registrations that include the racial slur — for any products, goods, or merchandise — that it could record with U.S. Customs as a trademark. In any event, isn’t Dan Snyder more concerned about counterfeit clothing and trinkets than counterfeit entertainment services, even assuming there could be such a thing.

So, did U.S. Customs and Border Protection drop the ball when they recorded the team’s service mark registrations, when they were improperly designated as trademark registrations? Anyone aware of the process of removing improper recordations?

So, how helpful can U.S. Customs personnel be to Dan Snyder and his team, in this very moment, when he has nothing helpful containing the slur recorded with Customs, and he can’t get any, while he continues to kick the can down the road, by exhausting all appeals in this case?

Yet another consequence of losing the R-Word registrations he does have will be for the USPTO to stop doing the team’s bidding by refusing registration of another’s application on the ground of likelihood of confusion for recent marks like “Washington Redskin Potatoes.”

Lanny, given all this, will Dan Snyder ever go lower case on his promise to never change the name?

It’s no secret that the NFL is facing a reputation crisis, on a variety of fronts. With 2013 being called “a very bad year” for the NFL, words will be difficult to describe how badly 2014 ends (reputationally), if the league continues on its current path of self-destruction.

A common thread to the concussion crisis and domestic assault crisis involves physical injury — and the league’s failure to act (contrary to its significant short term financial interest).

In the midst of the current crisis, much has been said about protecting the shield — yeah, the one to the right. As Mike Lupica wrote for the Daily News:

“We all get why these guys protect ‘the shield’ at all costs. But if that shield can’t properly protect its own players, or the women in their lives — or the children — what does it stand for, really?”

Kent Hollenbeck of The Holmes Report has offered some sensible advice:

“[I]f the NFL wants to bring any measure of authenticity back to itself – they could begin by stopping their self-inflicted harm of the shield, and begin repairing it. “

At the risk of piling on to the monumental opportunities in reputation-rebuilding for the NFL to consider, I’m thinking it is long past due to extend beyond the NFL’s forced focus on physical harm to include a focus on psychological harm too, starting with the harm the league perpetuates against Native Americans.

How much longer before the league takes responsibility for its ongoing use and protection of a racial slur as the name for the NFL franchise located in our nation’s capital? Did Mr. Snyder ever read and take to heart, “Enough — An Open Letter to Dan Snyder,” by David Zirin of Grantland?

Apparently not, but the league can and should take action before the USPTO’s decision to revoke the R-word federal registrations becomes final, and before its failure to act on this issue is more widely ridiculed.

The Daily Show’s piece entitled “The Redskins Name — Catching Racism,” was brilliant in highlighting the ridiculousness of Snyder’s steadfast refusal to face the facts while he clings to the past. Perhaps the Jon Stewart and Jason Jones piece and other recent comedic pieces like South Park’s “Go Fund Yourself” will help to inform those who still don’t get it — and to help shrink the sad disconnect among those who recognize the inappropriate nature of the R-word yet don’t want the team to change its name.

Seth Godin’s blog post from yesterday could be applied to the NFL’s current crisis, it seems to me: Failure “is almost always the result of missed opportunities, a series of bad choices and the rust that comes from things gradually getting worse. Things don’t usually explode. They melt.”

So, will the NFL use the present crisis as an opportunity to drop kick or simply retire the R-word?

Or, will it continue to measure short term profits while it watches the shield continue to melt?