I think my last case review about the Schlafly name went over well, so I’m back at it again today. This case review is actually a case preview. Last week, the Supreme Court decided to hear a case called In re Tam. This got a lot of attention from the press, mainly for the party not involved: the Washington Redskins. The Redskins trademarks have been the subject of controversy for decades. There was even an episode of South Park dealing with the issue. However, there are a lot of misconceptions about the Redskins’ case that I want to clear up.
I thought this would be a good time to explain the issues surrounding the Redskins trademarks, In re Tam, and the legal background for these cases. It sounds like a lot, but hopefully this can help explain what is at stake in this Supreme Court case, which will have a big impact on trademark law.
Legal Background
In previous posts, I’ve discussed some of the requirements for trademark registration. There are several reasons why a particular mark may not be registerable. For example, generic marks are not eligible for registration. You cannot register a mark that is “confusingly similar” to an existing registration. And under Section 2(a) of the Lanham Act, you cannot register marks that are “immoral, deceptive, or scandalous,” or marks “which may disparage.” So, for example, you cannot register an obscenity. No, I’m not going to list them here. This is a professional blog. Please just use your imagination. Both In re Tam and the Redskins case dealt with disparaging marks.
In re Tam at the Supreme Court
Simon Tam is the leader of a Portland, Oregon band called The Slants. The word “slant” has been used as a racial slur against people of Asian descent. Simon chose the name because he is an Asian American (as are the other band members), and wanted to reappropriate or reclaim the word. However, the Trademark Office would not allow Simon to register the mark on the basis that it is a disparaging term. Simon appealed the Trademark Trial and Appeal Board’s decision to federal court.
The basis of Tam’s argument was that the bar on registration of disparaging marks violates the freedom of speech under the First Amendment. One counter-argument is that Tam is still free to use the mark, even without a federal registration. Another is that the government has a substantial interest in not promoting or encouraging the use of offensive or disparaging marks.
Tam lost his case in the Federal Circuit. However, he won on appeal. The Court of Appeals ruled that the provision was unconstitutional. This has already had an impact on trademark law. The Trademark Office issued a memo stating that applications that would otherwise be rejected under these provisions of Section 2(a) should be suspended for the time being. This was done in anticipation of a Supreme Court case that would settle the issue. That brings us to the present day. So how do the Redskins fit into all of this?
The Washington Redskins Trademarks
Unlike In re Tam, the Washington Redskins were granted registrations for various REDSKINS trademarks a long time ago. However, registrations can be cancelled for the reasons listed in Section 2(a). That is what happened here. The Trademark Trial & Appeal Board voted 2-1 to cancel the registrations of various REDSKINS trademarks, finding that they were disparaging to Native Americans.
This was not the first TTAB ruling on the issue of disparagement for the REDSKINS trademarks. Susan Harjo filed a similar case in 1992. Back then, the Trademark Trial & Appeal Board also found the marks to be disparaging. But on appeal, a federal court ruled in favor of the Redskins. The judges there ruled that there was insufficient evidence that the term was disparaging.
This time around, the Redskins actually lost their appeal of the TTAB’s decision to cancel. They have appealed again, of course. And that is where their case sits today. The Redskins requestet to join their case to In re Tam, but were denied. The Supreme Court’s decision in that case will essentially decide the fate of the Redskins trademark registrations. But what does the loss of the registrations actually mean?
Do the Redskins Still Have Trademark Rights?
There has been a lot of misinformation about the effect of the cancellation of registrations for the Redskins trademarks. The only impact is that the Trademark Office has cancelled the registrations for the trademarks. The Redskins lost any rights that they had associated with the registrations. But they can still use the marks. And they still retained their common law rights to the marks. That means that there is not a free-for-all for the rights to use the Redskins name and logo. No, you can’t start selling knockoff Redskins shirts without fear of repercussion. You may be sued for infringement.
For more information on common law vs. federal registration rights, check out this post. While it is important to have a registration for your trademark, in the Redskins’ case their marks are already famous across the U.S. So they have very strong rights to the Redskins trademarks even without the registrations.
Conclusion
When In re Tam goes in front of the Supreme Court, it will have a big impact on trademark law. The Slants and Redskins both hope that these limitations on trademark registration will be found unconstitutional. The decision could open up a number of possible marks that could not previously be registered. In the meantime, offensive applications are being suspended pending the outcome of the case. If you have a trademark matter to discuss, I would not be offended if you call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
