Trademark Office Will No Longer Judge What Words Are Racial Slurs


Controversy over the Washington Redskins’ trademark lingered in the background for  years before the Trademark Trial and Appeal Board (TTAB) canceled its registration in 2014 after a Native American advocacy group led by Amanda Blackhorse raised concerns about the allegedly disparaging quality of the football team’s name and logo.

While that decision didn’t stop the NFL team from using the name, it did minimize legal protections against infringement and hinder the NFL from blocking counterfeit merchandise from entering the country. Those difficulties led the Redskins to sue for a reversal of the decision in Pro-Football Inc. v Blackhorse et al, an effort that would get a lift from an unexpected party: an Asian-American rock band.

The team filed an August 2014 complaint that the decision was replete with errors of fact and law due to its failure to restrict its analysis to the relevant time frame of 1967 to 1990, when the registrations were first issued.

“There is no record evidence showing that in 1967 to 1990 a substantial composite of Native Americans considered ‘Redskins’ to be disparaging,” wrote Craig Reilly, attorney for PFI. “The record is devoid of evidence as to how many Native American tribes there were in the United States in 1967, 1974, 1978 or 1990 and as to how many tribes considered the team name ‘Redskins’ to be disparaging during the 1967-1990 time frame.”

Further, Counselor Reilly wrote that trademarks are constitutionally protected commercial speech and that the Redskins marks are deserving of even greater protection than pure commercial speech because they are core speech, representing virtually infinite expression through a mere symbol, phrase or individual word.

But Elvira Castillo, an attorney representing the National Native American Bar Association and other groups, stated in an amicus brief to the 4th Circuit U.S. Court of Appeals that affirming the cancellation would not be a vote to silence speech or carve apart the First Amendment but that instead it would be an acknowledgement that race still matters in America.

“The government’s decision to cancel PFI’s trademark registrations is one place to start.”

Trademarks and  service marks are governed by the Trademark Act of 1946, also known as the Lanham Act. The law’s disparagement clause prohibits federal registration of a trademark if it comprises matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.

That provision came under intense scrutiny in recent months when Simon Tam, front man for the Asian-American musical group “The Slants” applied for trademark registration for the rock band’s name. Mr. Tam was denied because of its allegedly negative connotation.

On June 19, 2017, the Supreme Court unanimously ruled in Matal v Tam that the Lanham Act’s disparagement clause is unconstitutional because it violates the First Amendment.

On June 28, the U.S. Department of Justice filed a letter with the U.S. Court of Appeals for the 4th Circuit, requesting that it reverse the Order of the District Court and remand the case with instructions to enter judgment in favor of Pro Football.

“The decision means that the federal registration for the Washington Redskins trademark will be reinstated,” said Carl C. Butzer, an intellectual property attorney with Jackson Walker in Dallas, Texas. “But I am sure advocacy organizations that feel there is a disparaging aspect to the Redskins name will continue to put social pressure on both the Washington Redskins organization and the NFL to change it.”

The Supreme Court decision means it is still an open question as to what is appropriate speech and what’s offensive speech, but it affirms those standards should not be set by the U.S. Patent and Trademark Office, said John C. Connell, a First Amendment attorney with Archer & Greiner in Haddonfield, N.J.  

“The Supreme Court’s decision confirms a timeless principle in First Amendment jurisprudence that the government has no place in controlling, interfering, or refereeing public discourse,” Mr. Connell said.

Mr. Connell, who was a co-author on Tam’s petition for review, stated the disparagement clause is too vague to be applied in a predictable manner even by the best of PTO examiners: “The PTO itself has admitted that the clause is ‘vague’ and that decisions under it are ‘highly subjective.’ The PTO has had 70 years to work on this problem, and it is no closer to a solution today than at any time in the past.”

Although a class action lawsuit against the PTO by parties who’ve been denied a trademark registration under the Lanham Act is unlikely, the June 19, 2017, SCOTUS decision is expected to impact how the PTO approves or dismisses applicants going forward.

“The decision will probably ease the burden of PTO examiners because no longer will they have to act as sociologists, ethnologists or linguists in trying to discern the likely meaning of a particular term and whether it is negative or offends a substantial composite of the reference group,” Mr. Connell.

In the past, the PTO has kept a lid on potentially offensive trademarks but now racial and ethnic advocacy groups, such as the one lead by Ms. Blackhorse, will have no choice but to turn to public forums instead of the government when they find a particular trademark insulting or derogatory.

“We will see more free and open discussions in society because of the SCOTUS decision, which is what our democratic principles are based on,” Mr. Butzer told PacerMonitor News. “We have the ability now to effect change through social media, a powerful, galvanizing, communications medium.”

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