A Victory for Trademark Speech, and Possibly the Redskins

Ryan T. Darby Ryan T. Darby Leave a Comment


The U.S. Court of Appeals for the Federal Circuit issued a recent ruling that might help the Washington Redskins regain their trademark, which the government revoked for being “disparaging to Native Americans.”

The Ruling: In re Shiao Tam

The Federal Circuit ruled In re Shiao Tam that the portion of the Lanham Act allowing the U.S. Patent & Trademark Office to deny or revoke trademarks that “may disparage” some groups or “bring them into contempt or disrepute” violates the Free Speech Clause of the First Amendment.

The court began its analysis by concluding that trademarks constitute protected speech, citing their “expressive power,” and the notion that “[w]ords—even a single word—can be powerful.”

Once the court ascertained the premise that trademarks are protected speech, it was pretty easy for it to hold that Section 2(a) of the Lanham Act violates the First Amendment, which prohibits the government from discriminating against specific viewpoints.

Laws targeting the content of speech “are presumptively unconstitutional and may be justified only if the government proves that they are narrowly tailored to serve a compelling state interests.” Moreover, laws targeting the substance of a viewpoint are “even more suspect.”

The court determined that Section 2(a) constitutes content discrimination because it “applies to particular speech because of the topic discussed” by preventing the registration of trademarks that it believes are disparaging.

The court then took one step further by determining that Section 2(a) “is viewpoint discriminatory on its face.” It reasoned that since the government approves trademarks that reference groups in positive manners, rejecting trademarks that reference groups in negative manners inherently discriminates against the negative viewpoint.

The Federal Circuit also reinforced its premise that trademarks constitute protected speech by pointing to the government’s process for determining whether a proposed trademark is disparaging. The government examines how the referenced demographic views the trademark, and only rejects it if it concludes the message is disparaging. Therefore, the viewpoint of the speech is what results in the government denying the trademark.

The government could point to no compelling interest in prohibiting the speech at issue, and the court could not even find a substantial government interest in the prohibition, so it held that Section 2(a) of the Lanham Act violates the Free Speech Clause of the First Amendment.

How does this affect the Redskins?

The government has also denied the Washington Redskins’ application to renew its “Redskins” trademark, and that case is now pending before the Fourth Circuit.

The Fourth Circuit is not obligated to reach the same conclusions as the Federal Circuit, but the Federal Circuit’s opinion could certainly influence the Fourth Circuit. Tam is a very thoughtful and articulate opinion that carefully explains its conclusions.

The Redskins’ biggest challenge—like Tam—will be convincing the court that a trademark is fully protected speech requiring any impositions to satisfy strict scrutiny. It is possible to distinguish the two cases based upon the different rationales they argue for concluding their trademarks constitute protected speech.

“The Shins” is purportedly “a statement about racial and cultural issues in this country”—an obvious matter of public discourse and protected speech. Meanwhile, the Redskins’ appellate brief argues that its trademark is protected speech because it “signal[s] the source and quality of entertainment services.”

Well, if the “quality” of the product is the Redskins’ best argument, then I’m sure every football-watching judge on the Virginia-based Fourth Circuit had a pretty good laugh while reading this brief.

All joking aside, I think this rationale practically begs the court to categorize their trademark as commercial speech, which bears a much lower constitutional threshold than traditional speech: the government must prove a “substantial” interest in burdening it, rather than a “compelling” interest.

The Redskins would have been much better off arguing that their trademark expresses the view that Native Americans have a proud history and culture. At a minimum, it would have planted the seed in the judges’ minds that the Redskins represent more than the cash cow known as the National Football League, whether that’s true or not.

Still, the Redskins’ brief does argue that Section 2(a) is unconstitutional on its face for restricting the content and viewpoint of speech, and makes some strong arguments. The Federal Circuit’s holding in Tam may persuade the Fourth Circuit to agree.

What happens next?

If the Redskins prevail, then the government will probably appeal. If the government prevails, then the Redskins will probably appeal. However, that doesn’t mean the Supreme Court will agree to hear the case.

The Supreme Court receives roughly 7,000 appeal requests each year, and only grants around 80 of them. Four of the nine justices must vote to hear the case. I suspect that the important First Amendment ramifications at issue here would convince the justices to hear the case, and a “circuit split” caused by the Fourth Circuit reaching a different conclusion than the Federal Circuit would most certainly set the stage for a Supreme Court showdown.

Then again, if the Fourth Circuit reaches the same conclusion as the Federal Circuit, then the Supreme Court may well pass on it if at least six of the justices are pretty confident that the circuit courts got it right.

Only time will tell, but the Tam ruling certainly provides the Redskins with some very timely assistance.

Ryan T. Darby is a free speech and defamation defense attorney in San Diego, California. This entry was initially posted on The Law Office of Ryan T. Darby website.


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