In Pro-Football v Blackhorse, the court granted the challengers’ motion for summary judgment, finding that there was considerable evidence, including dictionary references, literary and media references that establish that a substantial composite of Native Americans may be disparaged by the marks. The court also denied Pro-Football’s summary judgment motion attacking the constitutionality of the Lanham Act’s prohibition against disparaging marks.
Pro-Football had argued that Section 2(a) of the Lanham Act, which prohibits registration of marks which “may disparage” peoples or bring them into contempt or disrepute, is an unconstitutional restriction on speech. It also asserted that the restriction is unconstitutionally vague and that the TTAB’s cancellation of the mark violated the due process and takings clauses.
Judge Gerald Lee rejected these arguments. He held that Section 2(a) does not implicate free speech concerns, and that the federal trade mark registration programme is government speech thus exempt from First Amendment scrutiny. Similarly, he found that Section 2(a) is not unconstitutionally vague because it gives fair warning of what conduct is prohibited and does not encourage arbitrary and discriminatory enforcement.
Lee also found that the takings and due process challenges fail trade mark registrations is not property under the Fifth Amendment.
The constitutional issue
The issue of whether Section 2(a) violates the First Amendment came up earlier this year, when the Federal Circuit affirmed the denial of an Asian American band’s registration of its name, The Slants, on the ground that the term is disparaging to Asian Americans. The In re Tam decision, since vacated for an upcoming en banc hearing, was unanimous, but Judge Kimberly Moore wrote an “additional views” section in the opinion strongly suggesting that Section 2(a) was unconstitutional.
We’re talking about registrations!
The decision also emphasises that at the heart of the matter is the registration of the marks, not the marks themselves or the use of them. Judge Lee wrote: “Just as Allen Iverson once reminded the media that they were wasting time at the end of the Philadelphia 76ers’ season 'talking about practice' and not an actual professional basketball game, the Court is similarly compelled to highlight what is at issue in this case – trademark registration, not the trademarks themselves.”
Thus, though the team may lose its registration, it can still use the marks in commerce and have protections under common law.
