District Court Affirms TTAB's Cancellation of REDSKINS Trademark Registrations | Practical Law

District Court Affirms TTAB's Cancellation of REDSKINS Trademark Registrations | Practical Law

In Pro-Football, Inc. v. Blackhorse, the US District Court for the Eastern District of Virginia denied Pro-Football, Inc.'s motions for summary judgment arguing against the Trademark Trial and Appeal Board's (TTAB) cancellation of its REDSKINS trademark registrations.

District Court Affirms TTAB's Cancellation of REDSKINS Trademark Registrations

Practical Law Legal Update 7-617-2567 (Approx. 4 pages)

District Court Affirms TTAB's Cancellation of REDSKINS Trademark Registrations

by Practical Law Intellectual Property & Technology
Published on 14 Jul 2015 • USA (National/Federal)
In Pro-Football, Inc. v. Blackhorse, the US District Court for the Eastern District of Virginia denied Pro-Football, Inc.'s motions for summary judgment arguing against the Trademark Trial and Appeal Board's (TTAB) cancellation of its REDSKINS trademark registrations.
On July 8, 2015, the US District Court for the Eastern District of Virginia issued an opinion in Pro-Football, Inc. v. Blackhorse, denying Pro-Football, Inc.'s (PFI) motions for summary judgment asserting that Section 2(a) of the Lanham Act violated PFI's First Amendment free speech rights and was unconstitutionally vague, and the TTAB's cancellation of its REDSKINS trademark registrations as disparaging matter that violated the Fifth Amendment's Due Process and Takings Clauses (No. 1:14-cv-01043-GBL-IDD, (E.D. Va. July 8, 2015)). The court also found that evidence established that the registered marks may disparage Native Americans and that the disparagement claim was not barred by laches.
In June 2014, the TTAB issued a precedential decision cancelling PFI's six REDSKINS trademark registrations, finding the marks were disparaging to Native Americans when they were registered (see Legal Update, Finding Disparagement, TTAB Orders Cancellation of Six REDSKINS Trademark Registrations). The petition to cancel was filed by several Native American individuals (the Blackhorse defendants).
There were two issues before the district court:
  • Whether the court should grant PFI's summary judgment motion challenging the constitutionality of Section 2(a) of the Lanham Act and the TTAB's cancellation order, and deny cross-motions brought by the Blackhorse defendants and the US government.
  • Whether the court should grant PFI's summary judgment motion and deny the Blackhorse defendants' summary judgment motion, where PFI challenged the evidence supporting disparagement and argued that laches barred the Blackhorse defendants' claims.
The district court rejected each of PFI's arguments. In granting the Blackhorse defendants' and the US government's cross-motions for summary judgement, the court held that:
  • Section 2(a) of the Lanham Act does not violate PFI's First Amendment rights. The court concluded that:
    • the Lanham Act does not implicate the First Amendment because the trademark owner is not prohibited from using the marks in commerce or restricted from engaging in any kind of public speech; and
    • the federal trademark registration program otherwise is government speech and therefore exempt from First Amendment scrutiny.
  • Section 2(a) of the Lanham Act is not void for vagueness. The court found that PFI was unable to show that Section 2(a) is unconstitutional in all of its applications and Section 2(a) gives applicants fair warning that a disparaging mark will be refused registration. Additionally, the court found that the USPTO's guidelines regarding what constitutes disparaging matter does not encourage or authorize arbitrary and discriminatory enforcement
  • Federal trademark registration is not a property right under the Fifth Amendment. Following the US Court of Appeals for the Federal Circuit in In re International Flavors & Fragrances Inc., 183 F.3d 1361 (Fed. Cir. 1999), the district court held that unlike the trademarks themselves, PFI has no property interest in the REDSKINS trademark registrations.
  • Ample evidence showed that the REDSKINS mark contained matter that may disparage a substantial composite of Native Americans.
  • Laches does not apply because the Blackhorse defendants did not unreasonably delay in bringing the petition and, in any event, an overriding public interest exists in removing trademark registrations that are disparaging to a segment of the population from the trademark register.
In determining that federal trademark registration is government speech and therefore exempt from First Amendment scrutiny, the district court applied both the US Supreme Court's Walker test and the US Court of Appeals for the Fourth Circuit's mixed/hybrid speech test. Under the Walker test (Walker v. Tex. Div., Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015)), all three factors weigh in favor of government speech:
  • Registry with the federal registration program communicates that the federal government has approved the trademark.
  • The public closely associates federal trademark registration with the federal government as the ® symbol signals the federal government's recognition of the mark.
  • The federal government exercises editorial control over the federal trademark registration program, with the power to deny or cancel a mark's registration.
Three of the four Fourth Circuit factors also weigh in favor of finding government speech:
  • The central purpose of the program is to provide federal protection to trademarks and is in part achieved by providing notice to the public of what trademarks are registered through the Principal Register.
  • The degree of editorial control exercised by the government is consistent with a finding of government speech.
  • The identity of the literal speaker is aligned with a finding of government speech as the Official Gazette of the USPTO and the Principal Register are published by the USPTO, making the government the literal speaker.
The district court found that the fourth factor, whether the government or the private entity bears the ultimate responsibility for the speech, weighed in favor of private speech because the mark owner, not the government, must defend it when the registration is challenged.
On January 23, 2018, the US Court of Appeals for the Fourth Circuit vacated this decision and remanded for reconsideration consistent with the US Supreme Court's decision in Matal v. Tam, 137 S. Ct. 1744 (2017). For more information on the Matal decision, see Legal Update, Supreme Court Holds Lanham Act Disparaging Marks Provision Violates First Amendment.