By UpCounsel Trademark & Business Transaction Attorney Liz Oliner

A trademark is a word, phrase or logo that identifies and distinguishes a product or service of a particular source. Trademarks are used by groups to protect their brands under federal law.

On October 3, the Supreme Court refused to hear an appeal by the Washington Redskins challenging the cancellation of its trademark by the U.S. Patent and Trademark Office in 2014. The team had argued that a 1946 federal law barring trademarks on racial slurs violates the right to free speech under the First Amendment.

The USPTO canceled the Redskins trademark in 2014 after “five Native Americans from different tribes said they were offended by the team’s name,” according to The Wall Street Journal.

A trademark is ineligible for registration if it “comprises immoral, deceptive or scandalous matter.”

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How did this happen?

The United States Patent and Trademark Office cancelled the Redskins trademark because under § 2(a) of the Lanham Act, a trademark is ineligible for registration if it “comprises immoral, deceptive, or scandalous matter.” Trademarks can be rejected for a variety of reasons, including because the name is generic, descriptive, filed in connection with a federally prohibited substance, or violates any other trademark rules, such as being too similar to an already existing trademark.

What do the Redskins (and any other company or organization that’s rejected) stand to lose?

The Redskins can still use their name, but they’ll lose the rights that those with federal trademarks get, including the legal presumption that you own the mark and that others cannot use the mark without your permission, as well as the ability to initiate a federal lawsuit against infringers. The Redskins could also lose millions in merchandising and sponsorships, according to The Wall Street Journal.

They’ll lose protection from U.S. Customs, which checks for counterfeit goods crossing the U.S. borders.

If they lose their appeal, they only have common law rights, meaning they cannot assert federal rights to challenge those selling unauthorized Redskins memorabilia and merchandise.

Is § 2(a) constitutional?

While the USPTO can currently reject any trademark that an examiner deems to be “immoral, deceptive, or scandalous,” this provision of the Lanham Act could be considered a violation of the First Amendment. The Supreme Court has yet to make a ruling on the constitutionality of § 2(a). 

Without their federal trademark, the Redskins could lose millions in merchandising and sponsorships.

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Even though the supreme court rejected hearing the Redskins case, they did agree to hear the appeal of The Slants, an American Asian musical group, who was also rejected based on the same disparaging language rule. The supreme court could decide specifically on The Slants, or could clarify § 2(a) in a more general ruling. If the Supreme Court clarifies § 2 (a) in a general ruling, this would provide much more guidance to examiners and applicants.

What if 2(a) is not found to be a violation of the Constitution?

Regardless of how these cases turn out, there are plenty of third party entities that can still decide what types of Trademarks are permissible on their platforms. For example, social media sites and Web sites like Apple, Amazon, and Ebay all have regulations guiding what can and cannot be allowed on their platforms. Similarly, the wine, tobacco, and firearms industries all regulate what goes on their packaging. It’s certainly an option to leave name regulation up to each separate industry, but industry regulation still leaves much up to subjectivity.

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About the author

Liz Oliner

Liz Oliner

Liz helps clients navigate the USPTO and has represented hundreds of small businesses and entrepreneurs in registering their trademarks. She has filed more 300 trademarks in the last year alone. Liz has a B.A. in English literature from Yale and a J.D. from Yeshiva University Benjamin N. Cardozo School of Law.

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