In response to the United States Patent and Trademark Office’s (“USPTO”) petition for writ of certiorari in to the U.S. Supreme Court In re Tam (“THE SLANTS” case), the owners of the Washington Redskins filed their own petition for certiorari, asking the justices to hear their trademark case before the Fourth Circuit Court of Appeals weighs in. Pro-Football Inc. v. Blackhorse et al., Case No. 15-1311 (“the REDSKINS cert. petition”).  As discussed previously in this blog (here) and (here), THE SLANTS case involves the constitutionality of § 2(a) of the Lanham Act, which prohibits registration of a trademark that “disparages” groups, ethnicities, races, etc. The REDSKINS case also challenges § 2(a), although since the case was brought as an inter partes trademark cancellation proceeding that sought to invalidate Pro-Football Inc.’s (“Pro-Football”) long-registered trademarks, it also implicates issues of procedural due process and vagueness under the Fifth Amendment.

Since around 1933, the NFL’s Washington, DC team has been known as the Redskins.  In 1967, Pro-Football registered its REDSKINS marks with the USPTO.  The marks remained valid, subsisting, and unchallenged until around 1992.  At that time, Native American rights activists began to object.  In 1992, activist Suzan Harjo led seven Native Americans in petitioning the USPTO Trademark Trial and Appeal Board (“Board”) to cancel the REDSKINS marks based on § 2(a)’s disparagement prohibition. The Board granted the petition. Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d 1705, 1758 (TTAB 1999).  On appeal, the case was dismissed for lack of standing. Pro-Football, Inc. v. Harjo, 284 F. Supp.2d 96, 68 U.S.P.Q.2d 1225 (D.D.C. 2003).  Thereafter, other petitioners were found.  In Blackhorse v. Pro-Football, Inc., the Board again cancelled the REDSKINS marks on the ground the term “redskins” was disparaging to a “substantial composite of Native Americans.” Blackhorse v. Pro-Football, Inc., 111 U.S.P.Q.2d 1080 (TTAB 2014).

Pro-Football appealed the Board’s decision to the Eastern District of Virginia, asserting “that the Trademark Trial and Appeal Board (TTAB) ignored both federal case law and the weight of the evidence,” and also infringed its First Amendment right to free expression. On July 8, 2015, Judge Lee affirmed the Board’s decision, denying Pro-Football’s summary judgment motions challenging the constitutionality of the Lanham Act, granting the Blackhorse’s summary judgment motions, and finding that “the evidence before the Court supports the legal conclusion that … the Redskin Marks consisted of matter that ‘may disparage’ a substantial composite of Native Americans.” Pro-Football Inc. v. Blackhorse, 112 F. Supp.3d 439 (E.D. Va. 2015).

Pro-Football appealed to the Fourth Circuit, which docketed the appeal on August 6, 2015, as No. 15-1874.   The REDSKINS appeal is fully briefed, with all briefs in final form due on March 18, 2016.

While the REDSKINS appeal was pending, THE SLANTS case was heard en banc by the Federal Circuit. There, the Federal Circuit held that § 2(a) of the Lanham Act imposes impermissible content-based and viewpoint-discriminatory burdens on protected speech, reversing the USPTO’s denial of registration of the rock band’s mark on the ground that it was disparaging to Asians (or Asian Americans). In re Tam, 117 U.S.P.Q.2d 1001 (Fed. Cir. 2016). On April 20, 2016, the USPTO filed its cert. petition seeking review of the en banc Federal Circuit decision.

The USPTO’s petition for certiorari in THE SLANTS case raises the single question of whether § 2(a)’s disparagement clause on its face violates the First Amendment.

On April 25, 2016, Pro-Football filed its cert. petition.  Pro-Football’s petition argues that its case is “an essential and invaluable complement to Tam.”  The questions Pro-Football presents in its petition are:

  1. Whether § 2(a)’s disparagement clause violates the First Amendment, the sole issue raised in the In re Tam petition.
  2. Whether § 2(a)’s disparagement clause is impermissibly vague, in violation of the First and Fifth Amendments.
  3. Whether the government’s decades-long delay between registering a trademark and cancelling the registration under § 2(a)’s disparagement clause violates due process

Pro-Football argues that its case would allow the Court to consider other important constitutional objections to § 2(a) that are intertwined with THE SLANTS solitary First Amendment question. For example, the Federal Circuit SLANTS en banc decision did not decide the vagueness question. Additionally, because THE SLANTS case involved only an initial denial of registration, the Federal Circuit had no occasion to consider whether due process protects registration-holders when the government’s delay in cancelling a registration has led to the loss of critical evidence and the death of key witnesses.

Pro-Football argued in its petition that application of § 2(a)’s disparagement prohibition, particularly in the context of after-the-fact cancellations, poses “the gravest threat to free speech.” As Court watchers know, it is impossible to predict whether the Court will grant neither, one or both petitions.