The ruling from the United States Supreme Court in Matal v. Tam involving the disparagement clause of the Lanham Act has already affected other pending cases. The unanimous ruling by the Supreme Court stated that a trademark cannot be denied based on disparaging language as it violates the Free Speech Clause of the First Amendment.

One case impacted by the Supreme Court’s ruling involves the Washington Redskins professional football team, the Department of Justice, and a group of five Native Americans.

The case was waiting to be heard by the 4th Circuit Court of Appeals, but earlier this year, the plaintiffs and the Department of Justice, asked the court to rule in favor of the Redskins and end the case. Mark Freeman, an attorney for the Justice Department’s civil division wrote the Court and stated “[c]onsistent with Tam, the Court should reverse the judgment of the district court and remand the case with instructions to enter judgment in favor of Pro-Football.” Jesse A. Witten, the attorney representing the Native Americans said “[t]here’s no more challenge to make. There’s a legal case and then there’s a cause. It was a galvanizing force that caused people to pay attention to the cause.”

The dispute began almost 25 years ago when Native American leaders met with Edward Bennett Williams, then president of the Redskins football team, to persuade him to change the team’s name.  While Williams refused to change the name, , he did make other changes. For example, Williams directed the organization to remove the phrase “Scalp ‘em” from the team’s fight song and replace it with “Beat ‘em.” He also ordered the team’s cheerleaders to stop wearing black braided wigs.

In 1992, 20 years since that first meeting with Williams, Native American activists took legal action against the team.  Suzan Shown Harjo, leader of the activist group, filed a petition with the United States Patent and Trademark Office (USPTO) requesting the team’s six trademark registrations be revoked. Seven years after the petition was filed, the USPTO ruled in Harjo’s favor and revoked the team’s six trademarks. Unfortunately for Harjo, the USPTO’s decision was later reversed due to insufficient evidence.

The Redskins never gave up their fight, they did not feel the team’s name was offensive and did not feel Native Americans did either. The team was urged by many to change their name, even former President Barack Obama asked for a name change, but they refused. The team was met with another lawsuit filed by five Native Americans. They were led by Amanda Blackhorse, who filed a separate petition with the USPTO requesting the six trademark applications be revoked. The USPTO ruled in favor of Blackhorse and held that the team could not trademark its name because anything that is “scandalous, immoral, or disparaging” is prohibited from trademark registration. This was further reinforced in 2015 when the District Court for the Eastern District of Virginia discussed the relationship between Section 2(a) of the Lanham Act and the First Amendment.

The Lanham Act provides: “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute….” Lanham Act, Section 2(a), 15 U.S.C. §1052.

As noted above, the United States Supreme Court’s opinion differed from that of the USPTO’s and the lower courts initial rulings. Justice Samuel Alito stated denying the registration of the “offensive” name “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” 

With the case being dropped, the Redskins will now await the 4th Circuit to issue an order that will permanently restore the team’s trademark protection.

Suiter Swantz IP is a full-service intellectual property law firm, based in Omaha, NE, serving all of Nebraska, Iowa and South Dakota. If you have any intellectual property questions or need assistance with any patenttrademark, or copyright matters and would like to speak to one of our patent attorneys please contact us.