For the Redskins, NFL Playoff Season Means. . . Constitutionality Questions?

By: Jessica Mendelson

The NFL playoffs aren’t the only big football news happening this month! The U.S. Department of Justice recently decided to intervene in the Washington Redskins trademark litigation over the constitutionality of certain provisions of the Lanham Act.

As we previously mentioned, the U.S. Trademark Trial and Appeal Board (“TTAB”) held in June 2014 that the REDSKINS trademarks were disparaging to Native Americans, and ordered the registration canceled, finding the marks violated Section 2(a) of the Lanham Act. 15 U.S.C. §1052, or section 2(a), as it is more commonly known, prohibits registration of a mark which “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.”

In August 2014, the Washington Redskins challenged the TTAB’s cancellation of the mark in federal court, filing a complaint in the U.S. District Court for the Eastern District of Virginia. The complaint sets forth several causes of action and raises a number of constitutional challenges to the Lanham Act. For example, the complaint seeks declarations that section 2(a) of the Lanham Act violates the First Amendment and that it is void for “vagueness.”[1] The team alleges that trademarks are “constitutionally protected commercial speech,” and section 2(a) of the Lanham Act unconstitutionally restricts their right to free speech by forbidding the registration of disparaging, disreputable, or contemptuous marks. The team argues this is a content based restriction of speech in violation of the First Amendment. Furthermore, the team alleges Section 2(a) is facially overbroad, and unconstitutionally vague, since the terms “disparage” and “contempt” are not defined within the Lanham Act, or in any other associated legislation.

In addition to the constitutional challenges raised with respect to the Lanham Act, the Washington Redskins also allege that canceling the mark violates the Fifth Amendment, claiming that depriving the team of its intellectual property rights constituted an unconstitutional “taking”.

Last week, the case took an interesting turn: the U.S. Department of Justice filed a Notice of Intervention in the appeal, seeking to defend the constitutionality of the Lanham Act. The fact that the DOJ has intervened suggests it “thinks the arguments for the unconstitutionality of the law are serious enough to warrant a response.” In fact, one well-known UCLA professor suggests that the exclusion of marks which could be seen as disparaging should be seen as unconstitutional. According to the Department of Justice itself, it is intervening for the “limited purpose” of defending a federal law which prohibits disparaging trademarks. According to the DOJ, federal law specifically authorizes the DOJ to intervene “in any federal action in which the constitutionality of an act of Congress is called into question.” The DOJ’s brief makes no arguments as to whether the TTAB decision to deny the mark was correct, and only addresses the statute’s constitutionality.

How the Eastern District of Virginia rules in this case could substantially impact trademark law, and what can be a registered trademark. If the court upholds the cancellation of the Redskins’ mark, the team can continue to use the mark, but would lose their federal trademark protection, diluting legal protection against infringement, and making it difficult for the team to prevent counterfeiting. Moreover, if the Court finds section 2(a) unconstitutional, it could expand registrable subject matter, as it would no longer prevent the registration of immoral, deceptive, or scandalous marks. Most experts see the fact that the DOJ has stepped in to be a positive step for the Native Americans seeking to cancel the mark, believing it to be a step which “will help” Native Americans to “ultimately to prevail.”

We will continue to update you on future developments in this case.



[1] The team requested a review of the entire record in the case de novo. Under Fourth Circuit precedent, if either party introduces into the record any piece of new evidence, the court must review the entire record de novo.