By: Stephen Agnatovech
In light of the George Floyd protests, politicians in Washington D.C., who participated in “Blackout Tuesday” called out D.C.’s own NFL team, the Washington Redskins, to take a stand against racial injustice, and change the team’s name. Following the outcry, a group of investors sent letters to companies such as FedEx, Nike, and PepsiCo to put pressure on the Washington Redskins to change their name, which subsequently resulted in major franchises like Amazon, Target, and Walmart to abandon their ties in selling Redskins merchandise. Moreover, in early July, the Redskins announced that they were parting ways with the team’s name, despite the survival of the trademark, in face of public outcry for the last three decades.
In 1946, Congress passed the Lanham Act, which provides for a federal registration system to protect trademarks used in commerce. Under the Lanham Act, (and since 1905), there has been a ban on registration of trademarks that qualify as either “immoral” or “scandalous.” The purpose of section 1052(a) of the Lanham Act was to make sure the government does not waste its resources on disparaging trademarks, and to not acknowledge their national registration. The court has often struggled with applying these elements to the registration of trademarks due to how overly broad the statute is as well as trying to avoid a violation of the First Amendment. This is not the first time the Redskins have taken heat from the public. In Harjo v. Pro-Football, seven Native Americans petitioned for cancellation of the trademark’s registration. The Court of Appeals for the District of Columbia failed to address the constitutional issues brought by appellants, and granted summary judgment for the National Football League on account that laches barred the appellants’ petition. The Redskins persistently fought for their rights to the name, and ultimately prevailed.
After the decision in Harjo, the Redskins moved forward, but the issue of what was an unacceptable trademark did not. It was not until the case of Matal v. Tam where the Supreme Court first acknowledged issues with the broadness of the Lanham Act. In the case of Tam, the Patent and Trademark Office (“PTO”) denied the defendant’s rock band to register their name “The Slants” because they concluded the name violated the disparagement clause in the Lanham Act, which prohibited registration of trademarks that “disparaged” other persons or beliefs. The majority opinion outlined by Justice Alito held otherwise. The court ruled that the disparagement clause violated the First Amendment because “it offended a bedrock of the First Amendment principle that speech may not be banned on the ground that it expresses ideas that offend.” The clause also protected anyone living or dead as well as every institution, indicating that the clause was never narrowly tailored. The Supreme Court’s disesteem for the Lanham Act was apparent after Tam, which resulted in the court’s lengthy opinion of the Act two years later.
Amidst the public outcry, the Supreme Court’s most recent decision last year in Iancu v. Brunetti struck down the Lanham Act in its entirety and alluded to potential acceptance of a new statute, solidifying potential trademark restriction, if such legislation was proposed by Congress. The Court recognized that the current standard in the Lanham Act was too broad to follow. The Court, in making its decision, ruled that there can no longer be a ban on registration of trademarks that are considered “immoral” or “scandalous” because those thresholds violated the First Amendment. However, the lengthy dissenting opinion by Chief Justice Roberts and Justice Breyer interpreted it differently. Roberts responded to the decision by stating that even those trademarks which fail registration may be used by their owners in commerce—thus speech is not being restricted solely because the trademarks lack additional protection under the Act. Breyer asserted that the government does have a reasonable interest in barring the registration of highly vulgar or obscene trademarks due to physiological and emotional impact; avoiding altercations in public; and protecting the sensibilities of children. Trademark law is in fact, highly regulated with a specialized mission to: “help consumers identify goods and services that they wish to purchase, as well as those they want to avoid.” Therefore, there must be a balance between regulating trademarks in the stream of commerce and protecting one’s First Amendment rights.
The Brunetti decision certainly left the gates open for registration of any type of trademark imaginable, which will thus result in a more competitive market going forward, but the question is whether free registration of “immoral” and “scandalous” marks will have an adverse effect on consumer perception. Given recent events, there has been an acknowledgment and unity in the country that has shed light on racial undertones. The veil has been lifted. The American public has not shied away from calling out racist tendencies rooted in our country’s history. As Breyer noted in his dissent, the list of offensive words has changed over time, and the list of swear words may be evolving yet again, perhaps in the direction including race-based epithets. Certainly, negative racial connotations exist in trademarks all across the country.
The public through the impact of social media has already exposed the outliers of trademarks that just do not make sense in contemporary society. It is appropriate to acknowledge the changes our country has gone through in the right direction in exposing controversial trademarks on its own, such as the Redskins, and expect that Congress will take action that will resemble this awareness in the registration of trademarks in the future.
Student Bio: Stephen Agnatovech is a second-year law student at Suffolk University Law School. He currently serves as a staff member on the Journal of High Technology Law. Stephen received his Bachelor of the Arts in Political Science from Stonehill College and wants to pursue a career in either intellectual property or sports law.
Disclaimer: The views expressed in this blog are the views of the author alone and do not represent the views of JHTL or Suffolk University Law School.
