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Federal Circuit Ruling May Assist D.C. Football Team Win Back Trademark Rights

The U.S. Court of Appeals for the Federal Circuit issued a ruling yesterday that could lead to reinstatement of the Washington Redskins trademark registration. The Court declared that the Federal government’s ban on “disparaging” trademark registrations, set forth in Section 2a of the Lanham Act, is a violation of the First Amendment. This statutory section is the same provision that was relied upon to revoke the Washington Redskins trademark registrations.

Yesterday's decision involved a case filed by a rock band called "The Slants." The Slants describe themselves as one of the first Asian-American rock bands. They feature a sound they call "Chinatown Dance Rock." 

The U.S. Patent and Trademark Office (USPTO) refused the band's attempt to register its name on the grounds that it was offensive to Asian Americans. The Federal Circuit yesterday overturned USPTO's decision. In so doing, the Court declared Lanham Act Section 2a to be unconstitutional discrimination based on unpopular speech.

The Court noted that a mark may contain "hurtful speech that harms members of oft-stigmatized communities,” but then went on to explain that "the First Amendment protects even hurtful speech.” The Court further noted that “[T]he government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks.”

In the previous separate case involving the Washington Redskins trademark, the Trademark Trial and Appeal Board had relied upon, and thereby recognized the constitutionality of, Section 2a of the Lanham Act when the Board revoked those trademark registrations in June 2014. That ruling was upheld by a federal judge this summer and is currently on appeal to the Fourth Circuit Court of Appeals in Richmond.

The Fourth Circuit is not bound by the ruling issued by the Federal Circuit, but yesterday's ruling will, of course, carry great influence. We will all have to wait and see.

If the Fourth Circuit does not follow the lead of the Federal Circuit (i.e., if the Fourth Circuit confirms the USPTO ruling that the Washington Redskins' trademark registration should be revoked), it would create a split in the Circuits. This may then attract the attention of the U.S. Supreme Court. Again, we will just have to wait and see.

© 2018 Varnum LLP


About this Author

Fred L. Schubkegel, corporate attorney, Varnum

Fred provides general legal counsel to private business interests and nonprofit organizations. He has over 30 years of experience assisting for-profit and nonprofit companies with advice, strategies and services related to startup, growth, development and exit, including entity formation and governance, financing, contracts, mergers and acquisitions, executive compensation, asset protection and business succession planning.

Fred has extensive knowledge in real estate and economic development with a particular knack for packaging incentives and credits to make the...