Pro-Football, Inc. v. Blackhorse
115 U.S.P.Q. 2d (BNA) 1524, 112 F. Supp. 3d 439, 2015 U.S. Dist. LEXIS 90091 (2015)
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Rule of Law:
The federal trademark registration program constitutes government speech, exempting it from First Amendment scrutiny, and the cancellation of a trademark registration for being disparaging does not violate the First Amendment or the Fifth Amendment's Due Process or Takings Clauses; additionally, a mark 'may disparage' if a substantial composite of the referenced group finds it offensive, and challenges to such marks are not barred by laches when public interest is high and delay is reasonable.
Facts:
- The "Washington Redskins" professional football team first used the "Redskins" name in 1933 in Boston, Massachusetts, to distinguish itself from another local sports team.
- The United States Patent and Trademark Office (PTO) approved and registered the initial "Redskins" mark for the team in 1967.
- Five additional variations of "Redskins" trademarks were approved and registered by the PTO for Pro-Football, Inc. (PFI) between 1974 and 1990.
- PFI consistently associated its team with Native American imagery, including a man in profile on two of its marks, a Native American profile on team helmets, marching band members wearing Native American headdresses, and cheerleaders dressed in Native American garb with stereotypical braided-hair wigs.
- By 1971 and 1972, newspaper articles documented opposition to the "Redskins" name by some Native Americans, and the President of the National Congress of American Indians (NCAI) met with PFI's president, Edward Bennett Williams, to explain that the team name was a slur.
- In 1972, the University of Utah dropped its "Redskins" nickname due to concerns that the term disparaged Native Americans.
- During the period of 1967-1990, multiple dictionary definitions characterized the term "redskin" as "often contemptuous" or "often offensive."
Procedural Posture:
- In 1992, Susan Harjo and six other Native Americans filed a petition with the Trademark Trial and Appeal Board (TTAB) to cancel the registrations of the Redskins Marks under Section 2(a) of the Lanham Act.
- In 1999, the TTAB ruled in Harjo that the Redskins Marks "may disparage" Native Americans when registered and ordered that the registrations of the marks be cancelled.
- Pro-Football, Inc. appealed the TTAB's Harjo decision to the United States District Court for the District of Columbia, which reversed the TTAB's ruling, holding that the TTAB’s finding of disparagement was unsubstantiated and that the doctrine of laches precluded consideration of the case.
- The Harjo case traversed back and forth between the district court and the D.C. Circuit, with the D.C. Circuit ultimately affirming the district court’s ruling that laches barred the claim in 2009, without addressing the merits of disparagement.
- On August 11, 2006, while the Harjo litigation was pending, Amanda Blackhorse, Marcus Briggs-Cloud, Phillip Gover, Jillian Pappan, and Courtney Tsotigh (Blackhorse Defendants) filed a new petition with the TTAB to cancel the same six registrations of the Redskins Marks.
- The TTAB suspended action in the Blackhorse case until the Harjo litigation concluded in 2009.
- On June 18, 2014, the TTAB ruled in Blackhorse to cancel the registrations of the Redskins Marks, finding that at the time of their registrations, the marks consisted of matter that both "may disparage" a substantial composite of Native Americans and bring them into contempt or disrepute.
- Pro-Football, Inc. then filed the current action in the U.S. District Court for the Eastern District of Virginia, seeking a de novo review of the TTAB’s Blackhorse decision, filing motions for summary judgment on its constitutional claims (Counts III-VI) and its claims contesting the TTAB's order (Counts I, II, and VII).
- The Blackhorse Defendants and the United States of America filed cross-motions for summary judgment, defending the constitutionality of Section 2(a) of the Lanham Act and supporting the TTAB's cancellation decision.
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Issue:
1. Does Section 2(a) of the Lanham Act, which prohibits registration of disparaging trademarks, violate the First Amendment or the Due Process and Takings Clauses of the Fifth Amendment? 2. Did Pro-Football, Inc.'s 'Redskins Marks' consist of matter that 'may disparage' a substantial composite of Native Americans at the time of their registration, and is the petition to cancel these marks barred by the doctrine of laches?
Opinions:
Majority - Gerald Bruce Lee
No, Section 2(a) of the Lanham Act does not violate the First or Fifth Amendments, and the Redskins Marks did consist of matter that 'may disparage' a substantial composite of Native Americans, with the challenge not barred by laches. The court reasoned that cancellation of a trademark registration does not implicate the First Amendment because it merely removes federal benefits and does not restrict PFI's ability to use the marks in commerce. Furthermore, the federal trademark registration program is government speech, and thus exempt from First Amendment scrutiny. Applying the Walker v. Texas Div., Sons of Confederate Veterans, Inc. factors (history, public association, government control) and the Fourth Circuit's Sons of Confederate Veterans, Inc. v. Comm’r of Va. Dep’t of Motor Vehicles (SCV) test (program's purpose, editorial control, literal speaker, ultimate responsibility), the court concluded that the program is government speech. Under Rust v. Sullivan, the government is entitled to define the contents and limits of programs it creates, and denying registration to disparaging marks falls within this power without penalizing private speech. Regarding the Fifth Amendment, the court found Section 2(a) is not void for vagueness. It applied a relaxed vagueness review standard because the statute does not prohibit speech or impose criminal/civil penalties. PFI's facial challenge failed as it could not prove the statute is unconstitutional in all applications. Section 2(a) provides fair warning through consistent dictionary definitions of 'disparage' and PTO guidelines, and does not authorize arbitrary enforcement. As-applied to PFI, it was not vague because PFI was on notice since 1967, based on contemporary dictionary definitions, that the term might be offensive. PFI's Takings Clause and Due Process Clause claims failed because a trademark registration is not considered 'property' under the Fifth Amendment, distinguishing it from the common law trademark itself. On the 'may disparage' claim, the court conducted a de novo review and concluded that the Redskins Marks did 'may disparage' a substantial composite of Native Americans during the relevant registration periods (1967, 1974, 1978, 1990). The court applied the TTAB's two-part test, finding that (1) the term 'redskins' referred to Native Americans due to PFI's consistent association of its team with Native American imagery, and (2) this meaning may disparage Native Americans. This finding was supported by extensive evidence across three categories: (a) dictionary definitions from the relevant period characterizing 'redskin' as 'offensive' or 'contemptuous'; (b) numerous scholarly, literary, and media references from 1911-1990 describing the term negatively; and (c) statements from Native American individuals and group leaders, including a 1972 meeting with PFI's president and declarations from prominent Native Americans confirming the term's offensive nature. The court stressed that 'substantial composite' does not require a majority and rejected PFI's counter-evidence as insufficient to negate the disparaging nature for a significant segment of Native Americans. Finally, the laches defense was rejected because (1) the Blackhorse Defendants did not unreasonably delay, as they filed their petition in 2006 while prior litigation concerning the same marks was pending and they were minors when the initial TTAB decision occurred in 1999, and (2) an overriding public interest in removing disparaging marks from the register weighs against applying laches.
Analysis:
This case significantly strengthens the government speech doctrine, extending its application to the federal trademark registration program. By characterizing registration as a government benefit rather than a private right, the court affirms that the government can deny or cancel registrations for disparaging marks without triggering strict First Amendment scrutiny. The decision clarifies that a trademark registration is not 'property' for Fifth Amendment purposes, reinforcing the distinction between common law trademark rights (arising from use) and the enhanced benefits of federal registration. The court's detailed application of the three-category evidentiary framework for 'may disparage' claims provides a clear roadmap for future challenges, emphasizing that proof of offense to a 'substantial composite' (not necessarily a majority) of a targeted group is sufficient, and that public interest can override a laches defense in such cases. This ruling has broad implications for brand owners using potentially offensive terms, underscoring the government's role in promoting inclusive public discourse through its administrative functions.
