The Washington Redskins surprising success on the field this year may soon extend to the courtroom. In June of 2014, the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (PTO) canceled the registration of six trademarks belonging to the football team under the disparagement provision of Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). This decision made national news due to the notoriety of the football team, who some thought might be forced to change its name in response.
However, in the recent case In re Tam, the United States Court of Appeals for the Federal Circuit held in an en banc split decision that the disparagement provision of the Lanham Act is unconstitutional. Appellant Simon Shiao Tam had been twice denied a trademark by the PTO for the name of his all-Asian-American bank, The Slants, under Section 2(a), which prevents the registration of immoral, deceptive, scandalous, or disparaging marks. The decision of the PTO was upheld by the TTAB and a panel of the Federal Circuit before the recent en banc decision that the disparagement provision of Section 2(a) is unconstitutional. The Federal Circuit subsequently vacated the TTAB’s holding that Mr. Tam’s mark is unregistrable and remanded the case to the TTAB for further proceedings.
This holding is a significant boon to the pending appeal by the Washington Redskins of the holding in Pro-Football, Inc., v. Blackhorse. In that case Judge Lee of the Easter District of Virginia upheld the TTAB’s decision to cancel the registration of the six trademarks belonging to the football team under the disparagement provision of the Lanham Act. The holding of In re Tam that the disparagement provision of the Lanham Act is unconstitutional provides support for the team’s appeal, but it is not binding on the Fourth Circuit where the Redskins have begun the process of appealing the decision by Judge Lee. As such, In re Tam does not guarantee victory for the Redskins in court. There is the possibility that the Fourth Circuit could view the issue differently and rule against the football team, creating a circuit split and likely garnering Supreme Court review.
There is also the possibility that the Redskins could be successful on their appeal in the Fourth Circuit, but on remand to the TTAB have their trademarks canceled under the one of the other provisions of the Lanham Act as either scandalous or immoral. The Federal Circuit ruled only that the disparagement provision was unconstitutional, leaving the constitutionality of the other provisions unclear. The TTAB would be free to cancel the trademarks under the scandalous or immoral provisions and then defend their decision in court.
While the holding of In re Tam does not guarantee that the Redskins are in the clear, it was certainly welcome news for the football team that enjoyed a year full of good surprises.