Wow – the recent decision from the U.S. Patent & Trademark Office (PTO) cancelling several Washington Redskins trademarks has sent shockwaves through the Washington, DC area. With the team’s headquarters and training facilities located in Virginia, where they generate lots of revenue, residents—and the commonwealth itself—seem to be taking the news especially hard.

Three members of the Virginia legislature recently announced their plans to form a “Redskins Pride Caucus” to represent fans that believe the name is a “source of pride,” and should not be changed. The caucus also claims to support “commercial freedom” in the commonwealth, and opposes the involvement of U.S. Congress members who urged the NFL to change the team’s name. According to Virginia Delegate David Ramadan, these congressional members should “go work on other issues and leave our Virginia businesses alone.”2014-07-22_Football-and-Constitution_Kandis

Redskins Part Deux

You might be surprised to learn that the recent cancellation decision was based upon essentially the very same record evidence relied upon to cancel these very same marks back in 1999. This first cancellation was ultimately overruled after a tortuous ten-year path through trial and appellate court review. In 2009, the appellate court finally affirmed reversal of the PTO’s cancellation based on laches. (Laches is an equitable doctrine that bars relief to those who delay assertion of their claims or “slumber” on their rights.)

To avoid a laches claim this time around, the plaintiffs were carefully chosen for their age, because the laches argument depended on when each plaintiff turned 18 (and thus able to bring suit in their own name). So, in the end, the only difference between the 2014 and 1999 cancellations is the age of the plaintiffs. I find this to be particularly absurd—more on that later.

Despite the news attention, the actual legal effect of the trademark cancellations is fairly minor. Nearly everyone knows by now that the decision affects registration only, and does not prevent the football team from continuing to use its trademark in any way. The registrations will also remain enforceable pending the certain appeal by the team. The cancellation decision itself thus serves mainly to poke at the public relations animal.

Here’s Where The Constitution Comes In

But isn’t the public sphere where this issue really belongs? The “marketplace of ideas” that flows from our freedom of speech should—and likely will—ultimately decide this issue for Dan Snyder and his football franchise. Real change will occur only when the weight of public opinion starts to affect their pockets.

So what, if any, are the larger lessons (or questions raised) from this long-running trademark dispute? Here are some of my thoughts:

The statute that prevents registration of a trademark that “may disparage” a particular group is unconstitutional or, at the very least, constitutionally suspect.

The key terms in this statute are unconstitutionally vague and overbroad. What does it mean to “disparage”? What is a “substantial composite” of what “group”? Even the PTO calls the statute “somewhat vague,” and any determination under the statute “necessarily a highly subjective one.”

Additionally, the statute permits improper content and viewpoint-based regulation of commercial speech, and inappropriately inserts administrative agency action into what should be public, social, or political debates.

The artificial requirement that a cancellation action must review a trademark for disparagement existing at the time of registration only, should be reconsidered.

As the dissent in the recent PTO decision noted, “To be clear, this case is not about the controversy, currently playing out in the media, over whether the term ‘redskins,’ as the name of Washington’s professional football team, is disparaging to Native Americans today.” In fact, if the same marks were applied for today, they would almost certainly be refused registration under the disparagement statute, since REDSKINS marks have been refused since 1992.

But the PTO (and the courts in the prior rulings) felt constrained to review for disparagement only at the time the registrations were granted, which for the Redskins matter occurred between 1967 and 1990. This is because the Trademark Act provides that a petition to cancel a trademark may be brought at any time if the registered mark “was obtained” contrary to the prohibition against disparaging marks. But the same section of the Trademark Act allows a petition to cancel to be brought at any time if the registered mark “becomes the generic name for the goods or services” or “is functional” or “has been abandoned.”

From where I sit, I see no reason to apply a limited, historical time constraint to petitions to cancel disparaging marks when the same is not true for petitions to cancel on other grounds. Isn’t it just as appropriate to consider whether a registered mark has become disparaging over time, similar to marks that may become generic over time?

Certainly, we can all think of trademarks once registered with ease that would be considered repugnant today. Do we really want to interpret the trademark law to say that, so long as the mark was not disparaging at the time it was registered (say, 1930), and it has been renewed over the years so that the registration is still valid, one can never petition to cancel the now-repugnant mark based on contemporary attitudes and mores, all because of two words—“was obtained”?

All of this talk about attitudes and mores, however, just brings us back to my first point above. Why do we still tolerate this statute?

After the Supreme Court’s recent decision in Petrella v. Metro-Goldwyn-Mayer, Inc. (the “Raging Bull case”), the laches defense relied upon by the federal courts to overrule the 1999 cancellation may be called into question.

The recent PTO decision revisited the laches defense and held that laches should not apply where a broader public policy concern is at issue. Thus, on appeal, a reviewing court may also re-visit the laches defense.

In Petrella, the Supreme Court eliminated laches as an absolute defense for copyright claims, so long as a plaintiff brings her claim within the statutory limitations period. Under the Copyright Act, the statute of limitations period is three years, with each infringing act triggering a new three-year limitations period. Because plaintiff in Petrella sought relief only for conduct occurring within the three-year limitations period, laches could not bar her claims.

The trademark statute in the Redskins matter similarly provides a limitations period. A petition to cancel a trademark on the ground that it may disparage a particular group may be brought “at any time.” Although a separate section of the Trademark Act states that laches may be considered and used where applicable, Petrella paves the way to argue that laches are similarly inapplicable in this trademark context because to hold otherwise would deprive a petitioner of his ability to bring a cancellation petition “at any time.”