Redskins no more? Pro-Football Inc. v. Blackhorse

(USPTO Reg. No. 0986668)

(USPTO Reg. No. 0986668)

A judge of the U.S. district court for the eastern district of Virginia issued a ruling today that should finally bring more than two decades of litigation over the “Redskins” trademark to an end. The memorandum order affirms the Trademark Trials and Appeals Board’s decision last year to cancel the “Redskins” trademark registrations owned by Pro-Football Inc. (PFI).

The district court rejected all of PFI’s arguments, finding that the “Redskins” trademarks, including both the word and the design logos, are unregistrable under Section 2(a) of the Lanham Act (15 U.S.C. § 1052(a)), which bars from federal registration any trademark that “may disparage” persons, or bring them into contempt or disrepute. The court also ruled that Section 2(a) does not violate the First or Fifth Amendments of the constitution.

Disparagement of Native Americans

The Redskins trademark was first used in 1933. It was registered in 1967, and variations on it were registered between 1974 and 1990.

Various kinds of evidence were submitted to show that the word “Redskins” may be disparaging to Native Americans, including both expert and lay witness testimony. Probably the most damning evidence of all, though, is the fact that for more than a century, dictionaries of the English language consistently have been describing it as an offensive term. The 1898 Webster’s Collegiate Dictionary described it as “often contemptuous.” The 1966 Random House Dictionary described it as “often offensive.” By 1982, American Heritage Dictionary was classifying it as “offensive slang.” Merriam-Webster and Collier’s contained similar definitions.

First Amendment

PFI argued that Section 2(a) violates its First Amendment rights. The court rejected this argument on two grounds: (1) trademark registration certificates are government speech, which is not protected by the First Amendment; and (2) refusal of registration does not impose any restrictions on speech. PFI is free to continue using its trademarks if it wants to; and it can continue to bring actions in state court (and in federal court, if diversity jurisdiction exists) to enforce its trademark rights. PFI can continue to use the word “Redskins” as its team name, on its products, and in its advertising, all it wants. It won’t be able to use the ® symbol, since that is reserved for federally registered trademarks; but it may use the ™ symbol to put the public on notice that it has trademark rights in the “Redskins” name and design logo.

Fifth Amendment

PFI argued that Section 2(a) should be declared void for vagueness. Fifth Amendment Due Process requires that the language of a statute proscribing conduct or speech, or imposing civil or criminal penalties, must be sufficiently definite to put a person on notice as to what is prohibited. Because Section 2(a) does not restrict speech or impose any civil or criminal penalties, the standard of review of the vagueness claim in this case is not very high. Here again, the dictionary evidence is not in PFI’s favor. Clearly, PFI was on constructive notice that its chosen trademark was offensive to people even before it began using it.

PFI also argued that cancellation of its registration violated the Takings Clause of the Fifth Amendment, which requires the government to provide reasonable compensation when it takes private property for a public purpose. The problem with this argument is that no property has been taken. True, a trademark is property. Registration of a trademark, though, is a ministerial act; it does not generate any new private property. Nobody has taken away PFI’s trademark. PFI can continue to use the trademark all it wants.

“The Slants” update

The U.S. Circuit Court of Appeals for the federal circuit recently came to similar conclusions in another case challenging the constitutionality of Section 2(a): In re Tam, No. 2014-1203 (April 20, 2015.)

In Tam, the issue presented was whether the USPTO violated the constitution by denying trademark registration to the Asian-American band, The Slants. The Court upheld the constitutionality of Section 2(a) for essentially the same reasons as the Virginia district court cited in PFI v. Blackhorse.

In this case, though, the Court took the relatively unusual step of appending an “Additional Views” statement to the end of its opinion. This “Additional Views” essay expresses concerns that Section 2(a) may inhibit speech by making only government-approved marks eligible for certain government-provided benefits (such as procedural presumptions of ownership and validity that potentially make it less burdensome to enforce trademark rights in some cases.)

It is difficult to know what to make of this “Additional Views” statement appended to the end of the opinion. Just about the only thing that is certain to come of the schism between the Redskins ruling and the “Additional Views” statement appended to the end of The Slants opinion is that there will be renewed interest, throughout the coming year, in the question whether registration of speech — whether on customized license plates or in trademark certificates — is government speech or private speech.

Genericide!

shredded_wheat_psA trademark can lose its distinctiveness if it comes to be used as a synonym for the product itself, and no longer serves as an indicator of the origin (maker) of the product. When this happens,  trademark protection is said to be lost through “genericide.”

Genericide can be a major disaster for a company that has invested many thousands of dollars registering and enforcing a trademark.

Some famous trademarks that have fallen victim to genericide include:

Ale House
Aspirin (in the U.S.)
Catseye
Cellophane (in the U.S.)
Escalator
Flit gun
Gramophone
Heroin
Kerosene
Lanolin
Laundromat
Linoleum
Mimeograph
Murphy Bed
Netbook
Pina Colada
Shredded Wheat
Thermos
Trampoline
TV Dinner
Walkman (in Austria)
Zipper

Some trademarks that are at risk (or have recently been at risk) of genericide include:

Adrenaline
AstroTurf
Band-Aid
Bubble Wrap
Bubbler (thanks to Wisconsinites)
Coke (thanks to Southerners)
Crockpot
Dumpster
Fiberglass
Formica
Frisbee
Google (recently survived challenge)
Gu (runners understand)
Hoover
Hula hoop
Jacuzzi
Jell-O
Jet Ski
Kitty Litter
Kleenex
Kool-Aid
Lava lamp
Mace
Memory stick
Muzak
Onesies
Photoshop
Ping Pong
Plexiglass
Popsicle
Putt-Putt Golf
Q-Tips
Realtor
Rollerblade
Saran Wrap
Scotch Tape
Sharpie
Skype
Speedo
Stetson
Styrofoam
Super Glue
Super Hero
Swiss Army Knife
Tarmac
Taser
Teflon
Tiffany
Tupperware
Vaseline
Velcro
Xerox
Zamboni

(These are not exhaustive lists.)

There are a number of steps you can take to help prevent genericide. For example, it is a good idea to always use your trademark as an adjective, never as a noun or a verb. (Say “Kleenex brand tissues are the best,” not “Kleenexes are best.” ) Some companies include anti-genericide provisions in their license agreements. For more ideas about what you can do to protect your brands, consult a trademark attorney.