Update

The trademark–and public opinion–war over the Washington Redskins has been waging on for a while. But there’s a new development in the form of a ruling from an appeals court that may impact the Redskins’ ability to keep their offensive name. The U.S. Court of Appeals for the Federal Circuit in Washington, D.C. just struck down a provision of federal law that prevented the copyrighting of offensive names on First Amendment grounds.

The case in front of the appeals court involved a band called “The Slants,” an Asian-American group led by a man named Simon Tam who chose their name in an attempt to “reclaim” the traditionally-derogatory phrase.

The Slants, Asian-American band from PDX, can trademark controversial name, U.S. court rules https://t.co/AjahNdAxAW pic.twitter.com/b8QMi4hWLP

— The Oregonian (@Oregonian) December 22, 2015

The band became embroiled in a legal dispute after it attempted to file for trademarks; the United States Patent and Trademark Office (PTO) refused the filing. Particularly at issue was something called the Lanham Act, which was passed in 1946, and “prohibits registration of marks considered scandalous or immoral.” However, the recent appeals court ruling decided that parts of the applicable section (2a) were unconstitutional, stating:

The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional. Because the government has offered no legitimate interests justifying § 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech. We therefore vacate the Trademark Trial and Appeal Board’s (“Board”) holding that Mr. Tam’s mark is unregistrable, and remand this case to the Board for further proceedings.

Obviously the case of the Slants and the case of the Washington Redskins are very different–one is a band using a racial slur in an effort to reclaim it, the other is a massive sports franchise using a racial slur despite its implications. Those nuances exist in a socio-political sense, but in a legal sense, the cases are very similar. The appeals court didn’t rule that the Slants could use their name because of the way they were using it, but rather because of First Amendment issues–ones that also could apply to the Redskins.

The Washington Redskins’ case is under review by the 4th Circuit Court of Appeals, and some legal experts have predicted that it may make its way all the way to the Supreme Court. Since the Lanham Act was passed over 60 years ago, a lot has changed, including the inception of Constitutional protection for commercial speech. But given that the Redskins’ case–which is based on very similar grounds–is making its way through the court system, the fact that another appellate court found that the applicable provisions of the Lanham Act were unconstitutional could end up being pretty convincing for the court hearing the appeal. Ultimately, the question of “offensive speech” as it relates to trademarks is far from being answered.

Update

In light of the Redskins’ recent win that garnered the team the NFC East title, the debate over the team’s name remains hot and heavy. I got the chance to talk about the case with Professor Robert Sherwin, who teaches at Texas Tech University School of Law, and is an expert in federal civil procedure and First Amendment Law. He pointed out that while this ruling may not necessarily persuade the federal judges in the Redskins trademark case, the fact that the U.S. Court of Appeals for the Federal Circuit in Washington D.C. accepted that part of the Lanham Act is unconstitutional–and was the first court to do so–is noteworthy. Sherwin also shared that this is likely “a big ticket kind of case” and an issue headed for the Supreme Court, although it’s yet to be seen which case the Supreme Court will decide to take on.

Sherwin also highlighted a similar First Amendment Case, decided by SCOTUS just last summer–Walker v. Texas Division, Sons of Confederate Veterans, Inc., in which the court decided 5-4 that the government wasn’t violating free speech when it rejected a Confederate Flag license plate design. However, in a move that surprised many, it was Justice Clarence Thomas who sided with the more traditionally liberal wing of the court to decide that it was not a First Amendment violation. Sherwin pointed out that both sides could use Walker in their arguments, and that the decision could hinge on Thomas, who is “probably the court’s foremost expert on First Amendment issues” when the case makes it the Supreme Court.

There’s a lot that’s up in the air right now when it comes to the Redskins’ name–the recent decision as it relates to the Slants may have only further muddied the waters. But one thing seems almost inevitable to many of us keeping an eye on these cases–this is something that the Supreme Court will have to weigh in on sooner or later.

Anneliese Mahoney

Anneliese Mahoney is Managing Editor at Law Street and a Connecticut transplant to Washington D.C. She has a Bachelor’s degree in International Affairs from the George Washington University, and a passion for law, politics, and social issues. Contact Anneliese at amahoney@LawStreetMedia.com.

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A California federal court dismissed a trademark lawsuit last week that John Wayne Enterprises brought against Duke University. The case was dismissed based on lack of jurisdiction and improper venue.

Actor John Wayne, born Marion Robert Morrison, had several nicknames that contained the word “Duke,” such as Duke Morrison, Duke Wayne, and The Duke. John Wayne Enterprises was created to “preserve and protect the name, image, and likeness of John Wayne by associating the John Wayne brand with quality and timeless products and experiences that embody the spirit of John Wayne and give back to the community.” In July 2013, the organization filed a trademark application with the Patent and Trademark Office to use the trademarks “Duke” and “Duke John Wayne” on all alcoholic beverages except beer. Last July, the organization sued Duke University for infringing its Duke trademark on alcoholic bottles.

John Wayne Enterprises argued that Duke University does not own the word “Duke” for use for all purposes’ however, the university argued that John Wayne Enterprises’ use of “Duke” on alcohol beverages caused consumer confusion, which trademark law is designed to prevent. According to the Los Angeles Times, John Wayne Enterprises’ “Duke” trademark is “a label on a bottle of bourbon stamped with a silhouette of the movie star in a cowboy hat, clutching a gun. The name ‘DUKE’ is stamped over his thighs, and John Wayne’s signature is reproduced near his feet.”  The John Wayne Enterprises logo can be seen here.

John Wayne Enterprises tried to gain personal jurisdiction over Duke University in a California federal court because “the school actively recruits students there, raises money there, maintains alumni associations there and sells university-related products there.” However, U.S. District Judge David Carter dismissed the Wayne estate’s lawsuit for lack of jurisdiction and said the case belonged in front of the Patent and Trademark Office Trademark Appeal Board in Alexandria, Virginia.

The court believed that “Duke was aware of John Wayne Enterprises’s presence in the state, but that there was no showing how Duke [University] purposefully directed its conduct at California by filing an opposition to trademarks in Virginia [the location of the Patent and Trademark Office.]”

John Wayne Enterprises and Duke University have battled over the use of the “Duke” trademark before. A July article in the Hollywood Reporter cites conflicts over using the name “Duke” in restaurant services, gaming machines, and celebrity licensing services. Thus, Judge Carter’s dismissal is likely not the end of this case. John Wayne Enterprises can always bring a suit against Duke University on the East Coast.

It’s rare to see John Wayne on the losing-end of a battle, but I am sure that John Wayne Enterprises is already preparing its next move to prevail in the end.

Joseph Perry

Joseph Perry is a graduate of St. John’s University School of Law whose goal is to become a publishing and media law attorney. He has interned at William Morris Endeavor, Rodale, Inc., Columbia University Press, and is currently interning at Hachette Book Group and volunteering at the Media Law Resource Center, which has given him insight into the legal aspects of the publishing and media industries. Contact Joe at staff@LawStreetMedia.com.

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I’d like to think my article from last week played a part in the important decision made today, but the true heroes are the United States Patent and Trademark Office. Congratulations, you get the Trevor seal of approval.

The USPTO canceled six federal trademark registrations for the name “Washington Redskins” today, saying that the name is “disparaging to Native Americans” and thus cannot be trademarked under federal law.

I’m actually dancing.

Lead attorney Jesse Witten of Drinker Biddle & Reath filed the case before the Trademark Trial and Appeal Board on behalf of five Native Americans.  “We presented a wide variety of evidence including dictionary definitions and other reference works, newspaper clippings, movie clips, scholarly articles, expert linguist testimony, and evidence of the historic opposition by Native American groups to demonstrate that the word ‘redskin’ is an ethnic slur,” Witten said in a press release.

Federal trademark law does not allow trademarks that could be considered offensive or racist to groups, so the ruling has stripped the Redskins of six different trademarks associated with the team, each containing the word “redskin.”

What does this mean for the Washington Redskins? They could potentially be forced to change the name of the team since they wouldn’t be able to make any money off of anything with the Redskins name or logo. But, Native Americans have been down this road before. In 1992 the Trial and Appeals Board rescinded the team’s trademark, only for it to be overturned in a federal court ruling after the team appealed.

The Redskins will still have rights to their name for the time being as they are expected to appeal the decision much like in 1992, but I have a strong feeling that this time it will be different and people will finally come to their senses and realize that the name is atrociously racist. So everybody please cross your fingers with me.

Daniel Snyder will fight tooth and nail to keep the name of his precious team, and I just learned today that the outspoken owner has a backup plan. Snyder had the name “Washington Warriors” trademarked more than ten years ago according to the Washington City Paper. This convinces me even more that he realizes the Redskins name is offensive, racist, derogatory, disrespectful, hurtful, obnoxious (I could go for days but I’ll stop with obnoxious), otherwise he wouldn’t need a backup name.

I guess I’m okay with Warriors

Native Americans won this battle but the war is not close to being over, it could be months and even years before we see the Redskins change their name and logo. But as a wise man named Trevor Smith once said, “we’ll fight and we’ll fight until we cant fight anymore, because our cause is just but our patience is poor!”

In all seriousness though, this was a great outcome for Native Americans around the country. The five plaintiffs should be extremely proud of their courage and determination as they could be the ones who finally get the organization to change its name.

—

Trevor Smith

Featured image courtesy of [RedSoxFan33 via DeviantArt]

Trevor Smith

Trevor Smith is a homegrown DMVer studying Journalism and Graphic Design at American University. Upon graduating he has hopes to work for the US State Department so that he can travel, learn, and make money at the same time. Contact Trevor at staff@LawStreetMedia.com.

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One of my career aspirations is to be a Trademarks Examiner at the Patent and Trademark Office.  So I guess you could say I’m trying to make trademarks my niche, the best dish in my food truck of legal knowledge, if you will. You have to love the aesthetic nature of it all, the analytical maze that you navigate to determine if a mark is eligible to be trademarked.  Although I see the arena of Trademark Law like a freshman Longhorn sees Darrell K. Royal, the subject may actually still be a bit lackluster…much like my perspective on Constitutional Law.

Instead of catching you up on new developments in the field this week, I thought we should ease up on the information overload and have a good time!

Here are just a few reasons why I love Trademark Law so much and why I think you should too:

1. Who doesn’t like to draw? Even if you’re on the stick-figure-with-balloon-shaped-heads level like I am, you still doodle once in awhile. Trademarks are much like doodles.  Someone had a business idea and was thinking of a name, symbol, or logo to represent that business. They started jotting down some ideas that were floating around until the cliché ‘AHA!’ moment finally hit, and now you get to use your 6-figure degree to analyze whether the business owner’s creation can be protected by trademark laws! (Note: if you’re interested in working with actual bodies of art, the Picassos and Rowlings, that’s copyrights –we largely stick to marks around these parts.)
2. What other field involves this degree of creativity? Labor Law? ‘Not I’, said the EEOC. Copyrights? Ok, yeah. Copyrights is cool, but Trademarks is so much more unique. You’re going to look at marks that may differ only in font or only in phonetics, inter alia. It forces you to be meticulous and determine if that wavy S on the end of Bobby Joe’s mark, that just so happens to be on the end of Wanda Roy’s mark, is enough to make the two confusingly similar. What types of businesses are being represented? How do the marks sound? How different are they in appearance? Ultimately, your concern as a trademarks attorney is to protect consumers from being exposed to a variety of similar marks that may cause confusion in the marketplace or capitalization off of another business owner’s good will.
3. There’s something for everyone. Trademarks Law covers nuances in the composition of body styles for vehicles to the design of dresses and shoes. (YES! THE YSL case!!) For example, Bentley sued the manufacturers of a “Bentley Body Kit” for imitating the inherently distinctive shape of Bentley vehicles under Trade Dress laws, which is a segment of Trademarks Law.
4. Trademarks attorneys are just so frikkin’ nice. Seriously. What pleasant-natured people we are.

On a completely separate note, if you’re ever in the DMV area in September, look into DC Art All Night. The talent in the Wonderbread Warehouse this year was nothing less than palpable. If this intrigues you, you probably enjoy art to some degree.  And if you’re on this site, then you have some interest in the law.  So why not combine the two and pursue a career in trademarks? (heh heh see what I did there?) Sure, there’s this large amount of standard character format (non-stylized text) marks that you analyze as well, but those are pretty neat too!

For more information about trademarks and possibly registering your own mark, visit the USPTO’s website.

Gena.

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Gena Thomas, a recent graduate of Howard University School of Law, was born and raised in Lafayette, Louisiana. A graduate of The University of Texas at Austin, she enjoys watching scary movies and acquiring calories from chocolates of all sorts.

Featured image courtesy of [opensource.com via Flickr]

Gena Thomas

Gena Thomas, a recent graduate of Howard University School of Law, was born and raised in Lafayette, Louisiana. A graduate of The University of Texas at Austin, she enjoys watching scary movies and acquiring calories from chocolates of all sorts. Contact Gena at staff@LawStreetMedia.com.

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