American cultural conservatism may be waning. Gay marriage, until very recently a strident political rallying flag for conservatives, is now constitutionally protected and legal in all 50 states, says the Supreme Court. Controversial symbols are falling. The confederate flag, which may have begun as the flag of the Confederated States of America who seceded from the Union, which led to a civil war in the 19th contrary, is offensive to many because it has also become a symbol of racial hatred and of a regime that fought a war at least in part set over the legitimacy of slavery. It nevertheless has remained extremely popular in the South. Suddenly, after yet another racially motivated hate murder, in South Carolina, these flags are coming down from Southern State Capitols; not being sold at Wal-Mart, and so forth.
Trade marks are not immune from this trend. The legal battle over the continued registration of the Washington DC professional football team’s REDSKINS trade marks continues to go against the marks. Meanwhile, a Court of Appeals upheld the refusal to register THE SLANTS for an Asian-American rock band.
REDSKINS case raises Constitutional questions
In 2014, the Trademark office ordered the cancellation of various REDSKINS marks on the grounds that they would have been disparaging to a substantial composite of Native Americans. Registration of marks that “may disparage or falsely suggest a connection with persons….” is prohibited under Section 2(a) of the Lanham Act, 15 USC Section 1052(a). Pro Football, the owner of the marks, appealed the cancellation by asking for a de novo trial in federal district court (the court of first instance), instead of the more typical avenue of a direct appeal to the Court of Appeals for the Federal Circuit. The Court, upon a de novo review of the cancellation action against various REDSKINS trade marks, ordered the cancellation of the marks upon cross-motions for summary judgment, ruling on the evidence in the Trademark Office record as to whether the mark would have been disparaging to a "substantial composite" of Native Americans at the time of registration in the 1960s and 70s.
The judge made it very clear that he was not ruling as to whether Pro Football could continue to use these marks, as they retain common-law rights. He wrote: “What actions, if any, [Pro Football] takes going forward with the marks are a business judgment beyond the purview of this Courts’ jurisdiction.” Indeed, unlike in most of Europe, common-law rights are strong in the United States, so the inability to register an otherwise famous trade mark is not as damaging as it might be elsewhere.
Pro Football made a number of interesting constitutional arguments, all of which the Court rejected. Pro Football argued that Section 2(a) violates the First Amendment (free speech). The Court said no because first, no tangible speech is being suppressed, since the Redskins marks can still be used, and second, because a trade mark registration is government speech, which is not covered by the First Amendment. Thus just as the State of Texas was allowed in its discretion to refuse a request to issue Sons of the Confederacy licence plates with a confederate flag without violating free speech, the US Trademark Office has discretion over what marks it thinks should be registered.
Pro Football argued that Section 2(a) was a taking under the Fifth Amendment (“no person shall … be deprived of life, liberty, or property, without due process of law”) but the Court, relying on other precedent, held that a trade mark registration is not a property right.
Pro Football also argued that the matter was barred by laches (delay), but the Court noted that where the public interest is at stake, laches is not a defence. In The US, courts often treat trade mark law as a consumer protection issue.
THE SLANTS refusal upheld
In a parallel case in a different Court, the Federal Circuit Court of Appeals, which hears direct appeals from the Trademark Office, upheld refusal of registration of the mark THE SLANTS for an Asian-American music band. (In this case, the mark was held to disparage a group of which the applicant is a member, unlike in the Redskins case.)
The applicant, Mr Tam, made the same kinds of constitutional arguments that Pro Football made. He also argued that he was denied equal protection under the law because his ethnic identity was a factor in the decision. (“No state [or the federal government]…shall deny to any person within its jurisdiction the equal protection of the laws.”) The Court rejected these also, but Judge Moore presented thoughtful additional views on whether it is time for the Court to revisit the constitutionality of Section 2(a).
Janet Satterthwaite is a member of the IP Outer Borders Team and the HouseMARQUES US correspondent. She is a partner of Venable in Washington DC.