First Amendment Protection for Offensive Trademarks Could Arise in 2015

2015 could be the year in which courts give greater First Amendment protection for the registration and use of offensive trademarks.

The Redskins Trademark Case

Last year, the federal Trademark Office decided the trademark registrations owned by the Redskins football team that contain the word “Redskins” should be revoked because, it determined, that name was disparaging to American Indians at the time the registrations were issued.

A section of the federal trademarks statute forbids the registration of trademarks that are disparaging of a group or otherwise offensive.

The Redskins appealed this decision to a Virginia federal trial court. Trial is set for June of this year.

Among other arguments, the Redskins note the Trademark Office will register trademarks that praise a group but not ones that disparage a group. They claim this difference is discrimination on the basis of viewpoint, which they argue is prohibited by the First Amendment.

The Redskins can keep using its name even if it loses its trademark registrations because a trademark registration just strengthens trademark rights. Trademark rights arise from just using a trademark to sell goods or services.

Yet, you get a lot of advantages from having your trademark registered. The Redskins argue that being denied these advantages constitutes punishing the team based on the content of its speech – its team name.

The U.S. Department of Justice recently joined in the lawsuit to defend the constitutionality of the prohibition on offensive marks. This indicates the federal government believes there is a substantial chance this First Amendment argument could win.

In other case news, the American Indian plaintiffs did something that may have perturbed the federal judge who will decide the case. The Redskins named these American Indians as the only defendants in its appeal because federal law prevents naming the Trademark Office as a defendant.

The American Indians argued the appeal should be dismissed because they claim to have no stake in the appeal even though their complaint to the Trademark Office precipitated the cancellation of the trademark registrations. If that argument had won, the Redskins would have had no one to sue to seek reversal of the Trademark Office’s decision, so the Redskins would not have been able to challenge that revocation.

The federal judge rejected this argument forcefully. You can sense in the judge’s written opinion his incredulity that the American Indians would make such an argument. That matters because this judge will decide the case himself – there will not be a jury. I wonder what affect this will have on the judge’s final decision on the case.

Appeal of “The Slants” Decision

Last year, the Trademark Office also denied federal trademark registration for the trademark “The Slants” for a rock band composed of Asian men. The Trademark Office held the name is offensive to Asians even though the band members had decided to “own” the moniker.

The band is challenging that decision in a federal appellate court. During oral argument of the appeal, one of the three judges made several comments that give the impression she thinks the prohibition on registering offensive trademarks violates the First Amendment.

It’s not clear whether this federal judge would vote to declare this part of the federal trademark law unconstitutional or whether she could get at least one of the other two judges to vote that way with her.

Appeal of the NAACP Abortion Decision

Also last year, a Virginia federal trial court held an anti-abortion group (headed by black individuals) had committed trademark infringement when it ran an article and billboards calling the NAACP the “National Association for the Abortion of Colored People.” (It’s really the “National Association for the Advancement of Colored People.”)

The anti-abortion group contended the NAACP worked cooperatively with pro-abortion groups. The anti-abortion group used its article and billboards to fundraise to fight against abortion.

The trial court accepted testimony from an NAACP official that some of its constituents were confused by the anti-abortion group’s ads into believing the NAACP’s name actually included the word “abortion.”

The anti-abortion group has appealed to the U.S. Court of Appeals for the Fourth Circuit. Among things, it argues the First Amendment protected their use in advocacy of a recast moniker for the NAACP even if it caused minor confusion for some NAACP supporters.

Notably, the American Civil Liberties Union of Virginia and the Electronic Frontier Foundation have filed briefs with the appellate court supporting this First Amendment argument.

I was surprised the trial court found trademark infringement occurred. There’s a good chance the appeal will succeed, either on First Amendment grounds or just because the infringement case was weak.

Written on January 20, 2015

by John B. Farmer

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