Supreme Court decision further bolsters Redskins' trademark defense

Chris Lingebach
June 24, 2019 - 7:24 pm
Supreme Court decision further bolsters Redskins' trademark defense

Kim Klement-USA TODAY Sports

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A U.S. Supreme Court decision Monday struck down a law which had banned trademarks that are "scandalous" and/or "immoral" from being registered federally.

This decision should only further strengthen the Washington Redskins' ability to defend their federal trademarks, which were once canceled by the U.S. Trademark Trial and Appeal Board in 2014, in the future.

In April, SCOTUS agreed to hear the case of Erik Brunetti, owner of the clothing brand "FUCT," who was seeking federal registration of the eponymous trademark. The Patent and Trademark Office denied Brunetti's trademark application, citing the same provision of the Lanham Act that was previously used to deny the Redskins trademark protection.

Section 1052 of the Lanham Act prohibits registration of trademarks that "consist of or comprise immoral or scandalous matter."

Brunetti argued this was a violation of his First Amendment right, and the Supreme Court agreed, ruling it is unconstitutional to prohibit a trademark registration if that prohibition is "viewpoint based." Further, they ruled "the disparagement bar (ban) was viewpoint based."

So what does that mean for the Redskins? 

It means the organization now has two recent Supreme Court decisions to defend future challenges against their federal trademark protections, which have come under intense political pressure through the years, peaking in June 2014 when the Trademark Trial and Appeal Board canceled the Redskins' six federal trademarks, "because they were disparaging to Native Americans at the respective times they were registered."

The Redskins went on to appeal that ruling, which kicked around in the appeals courts before it was eventually vacated based on a June 2017 Supreme Court ruling in "Matal v. Tam." That SCOTUS decision sided with an Asian-American rock band called "The Slants," which had applied for trademark protection in 2011 but were denied when the trademark office deemed the name to be "disparaging."

That SCOTUS decision, plus Monday's decision now give the Redskins protection against any future claims that their trademarks are "disparaging," "immoral," and/or "scandalous."

Justice Elena Kagan delivered the opinion of the court on Monday, which was shared by Justices Thomas, Ginsburg, Alito, Gorsuch and Kavanaugh. She argued their "Matal v. Tam" decision established precedent used in this latest decision, that Section 1052 of the Lanham Act "violated the First Amendment because it discriminated on the basis of viewpoint."

"Today we consider a First Amendment challenge to a neighboring provision of the Act, prohibiting the registration of 'immoral or scandalous' trademarks," Justice Kagan wrote. "We hold that this provision infringes the First Amendment for the same reason: It too disfavors certain ideas."

In his concurring opinion, Justice Samuel Alito noted the discriminatory provision of the Lanham Act "cannot be fixed without rewriting the statute," effectively pushing the issue to Congress for a hard reset. For the Redskins, this means they likely cannot be stripped of their federal trademarks again unless or until Congress rewrites the Lanham Act, and a new challenge to their trademarks is presented from there.

"Viewpoint discrimination is poison to a free society," Justice Alito wrote. "But in many countries with constitutions or legal traditions that claim to protect freedom of speech, serious viewpoint discrimination is now tolerated, and such discrimination has become increasingly prevalent in this country. At a time when free speech is under attack, it is especially important for this Court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination. We reaffirm that principle today."

"Our decision is not based on moral relativism but on the recognition that a law banning speech deemed by government officials to be 'immoral' or 'scandalous' can easily be exploited for illegitimate ends," he continued. "Our decision does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas."

The Redskins declined to comment for this story.

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