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Posted on July 8, 2015.
Some key things to know about the recent decision to cancel federal registrations for the trademark REDSKINS, which was made by Judge Gerald Bruce Lee of the United States District Court for the Eastern District of Virginia, Alexandria division. This is a federal trial court.
• The decision does not force the Redskins to change their name. You don’t need a trademark registration to use a name for a product or service. Trademark registration just strengthens trademark rights that automatically arise from using a word or phrase as a trademark.
• The case isn’t over. The Redskins can and will appeal to a federal appellate court – United States Court of Appeals for the Fourth Circuit.
• The team generally will still be able to use its “common law” trademark rights to stop others from using the REDSKINS name without permission, such as on counterfeit jerseys. It just will have to do more work to demonstrate its trademark rights rather than being
• If the decision stands, it will hamper some efforts by the team to protect against counterfeiters and mimics. The decision apparently would keep the team from being able to use the U.S. Customs Service to stop the importation of counterfeit merchandise, and it apparently would keep the team from being able to use the U.S. Marshals Service to seize counterfeit merchandise. Also, it’s easier to stop cybersquatters if you have a trademark registration. (Cybersquatting is registering a domain name that approximates someone else’s trademark, like RedskinsBall.com.) In addition, it’s easier to attack trademark infringements on social media, such as Facebook and Twitter, if you have a trademark registration.
• The biggest issue in the case is whether the federal statutory prohibition on registering disparaging marks violates the First Amendment. The court found no violation, citing a recent U.S. Supreme Court case that held that Texas can decline to issue certain vanity license plates based upon the proposed content. In that case, Texas refused to issue a license plate displaying the Confederate battle flag.
Specifically, in this REDSKINS case, the federal court found that trademark registrations are government speech, and that, generally, the government can refuse to engage in saying certain things even if it would be unconstitutional to ban the saying of those things by private individuals. The U.S. Supreme Court recently held that vanity license plates are government speech.
This federal court’s holding that trademark registrations constitute government speech is shaky. Federal trademark registration is entirely funded by user fees – fees paid by patent and trademark applicants. Also, a trademark registration doesn’t “co-brand” a trademark with a state government in the same way that a license plate “co-brands” a state’s image with the message conveyed by the vanity portion of the license plate.
Under the way of thinking used by this federal court, a state could ban a business from incorporating under a disparaging name or the issuance of a business license to a business with a disparaging name.
• Shockingly, this court never addressed a recent case in the Court of Appeals for the Federal Circuit involving a rock band of Asian men called THE SLANTS. The Trademark Office denied trademark registration for the band name, holding it is disparaging to Asians.
The band appealed to the Court of Appeals for the Federal Circuit. The court upheld the denial, saying it was bound to do so by a 1981 decision of that court.
Yet, the appellate judge who wrote The Slants opinion, Kimberly Moore, also wrote a side opinion in which she forcefully argued that the federal proscription against registering scandalous and disparaging trademarks is an unconstitutional restriction on free speech. She cited the REDSKINS case as one where constitutionally protected speech is at issue.
Judge Moore’s argument persuaded the Federal Circuit to vacate its opinion ruling against the Slants and to schedule a hearing on whether this prohibition is unconstitutional. I think the court is going to side with Judge Moore’s view.
If the Federal Circuit does that, then its opinion would be on a collision course with this REDSKINS decision. If the Fourth Circuit doesn’t reverse this REDSKINS decision, then the U.S. Supreme Court would be under tremendous pressure to soon take a case to clean up the issue of whether or not the First Amendment prohibits the restriction against registering disparaging trademarks.
• All the American Indian plaintiffs had to prove was that a substantial proportion (not even a majority) of the American Indian community considered the term REDSKINS disparaging at the time the registrations were issued, which ranged from 1967 to 1990.
• The team also has trademark registrations for their logo without the word REDSKINS, such as the iconic American Indian on the helmet. Those registrations were not attacked or cancelled.
Written on July 8, 2015
by John B. Farmer
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