Does the First Amendment bar cancellation of Redskins?

• Author: Lefstin, Jeffrey

It is to be hoped that one day all offensive and derogatory language, speech, and symbols predicated on race will be completely eradicated from our culture. In the meantime, public officials have the obligation to ensure that they are not used with the imprimatur of the State.(1) INTRODUCTION

On April 2, 1999, the Trademark Trial and Appeal Board of the United States Patent and Trademark Office cancelled the registrations of the trademarks THE WASHINGTON REDSKINS, REDSKINS, and REDSKINETTES, and their associated emblems, by its decision in Harjo v. ProFootball Inc.(2) Cancellation proceedings were initiated by a group of seven Native Americans, who successfully argued that the marks tended to disparage Native Americans as a people, and were therefore unregistrable under section 2(a) of the Lanham Trademark Act.(3)

Activists who oppose the use of Native American names and images by sports teams hope that this action against a professional team is only the first legal victory in a long-running campaign to eradicate the less visible but vastly more numerous Braves, Chiefs, Indians, Redskins, and Warriors that champion America's elementary schools, high schools, and colleges.(4) A similar petition for cancellation of the Atlanta BRAVES trademark has already been filed by the Native American Resource Academy.(5)

The campaign to eliminate Native American sports team names is only one element in a broader movement that seeks to reclaim Native American cultural symbols from their pervasive use as commercial identifiers in contemporary American society.(6) Other elements in this movement include proposals that Congress expressly grant property rights in Native American symbols to tribal governments(7) and that the trademark law be revised to elevate tribal symbols to the status of national insignias(8)--which are unregistrable under the Lanham Trademark Act.(9)

During the course of the cancellation proceedings, the Redskins(10) attempted to argue that cancellation of their registrations would constitute an impermissible restriction of their commercial speech rights under the First Amendment.(11) However, the Trademark Trial and Appeal Board, as an administrative tribunal, believed itself to be without the authority of an Article III court to determine whether section 2(a) of the Lanham Act was unconstitutional, either on its face(12) or as applied.(13) Hence, the Board refused to consider the Redskins' argument that cancellation of their trademarks was an impermissible restriction on commercial speech.(14)

However, the Redskins have appealed the Board's decision to the District Court for the District of Columbia.(15) As an Article III court, the district court is certainly empowered to hear constitutional challenges. It is therefore likely that the district court will have to determine whether the Trademark Trial and Appeal Board's action violates the First Amendment. The aim of this note is to answer that question.

But determining the constitutionality of the Board's action poses questions that lie at the unsettled intersections of otherwise well-developed bodies of law. Can the Supreme Court's commercial speech jurisprudence be sensibly applied to trademark registration? Does a trademark in a sports team name, which serves functions far removed from traditional trademark functions, merit commercial speech protection? Part I of this note reviews the salient features of the Trademark Trial and Appeal Board's decision to revoke the Redskins' trademarks. Part II briefly summarizes the evolution of First Amendment protection in the Supreme Court's commercial speech case law. Part III discusses attempts by courts and commentators to apply First Amendment commercial speech doctrine to the area of trademarks, trade names, and trade labels. Part IV demonstrates that the decision to revoke the Redskins' trademarks would likely not survive a First Amendment challenge under a traditional commercial speech inquiry. However, Part V argues that a trademark like REDSKINS lacks the attributes of commercial speech that would make commercial speech doctrine a useful framework for analysis. Part VI explores the alternative analytical approaches of unconstitutional conditions doctrine and public forum analysis.

1. THE DECISION OF THE TRADEMARK TRIAL AND APPEAL BOARD

   Section 2(a) of the Lanham Trademark Act provides that no trademark shall be refused registration unless, inter alia, it "[c]onsists 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."(16) The Native American petitioners in Harjo argued that the REDSKINS mark was registered contrary to section 2(a), on the grounds that it was scandalous subject matter, that it disparaged Native Americans, and that it brought Native Americans into contempt or disrepute.(17) However, the issue at stake in Harjo was not whether the mark REDSKINS is currently scandalous or disparaging of Native Americans. Under the Lanham Act, a petition for cancellation must allege that the trademark was scandalous or disparaging at the time it was granted--that is, that the mark was originally registered in violation of section 2(a) of the Act.(18) Therefore, the Trademark Trial and Appeal Board determines whether a challenged trademark was scandalous or disparaging at the time the registration was obtained.(19)

   Far more registrations denied under section 2(a) of the Lanham Act have been denied as "scandalous" subject matter, rather than as subject matter that may disparage or generate contempt.(20) Therefore, while acknowledging that the guidelines for determining whether a mark is "scandalous" are somewhat vague and subjective,(21) the Harjo Board followed court and Board precedent and adopted as its yardstick dictionary definitions of "scandalous" contemporaneous with the 1946 passage of the Lanham Act.(22) From these sources, the Board defined "scandalous" subject matter as matter "`[g]iving offense to the conscience or moral feelings'" or "`shocking to the sense of math, decency, or propriety.'"(23)

   The Native Americans challenging the Redskins' trademarks alleged not only that the marks were "scandalous," but also that the marks disparaged Native Americans and brought them into contempt or disrepute.(24) In the realm of disparaging marks, the Harjo Board found little in the way of precedent or legislative history to guide its determination.(25) Paralleling the approach by which earlier tribunals had established the standard for "scandalous" subject matter, the Harjo Board sought to establish the meaning of "disparage" at the time the Lanham Act was passed in 1946.(26) From contemporary dictionary definitions, the Board concluded that "disparaging" trademark matter was matter that "may dishonor by comparison with what is inferior, slight, deprecate, degrade, or affect or injure by unjust comparison."(27) Given such a definition of "disparage," the Board concluded that the test for subject matter that might bring persons into contempt or disrepute ought to be identical to the test for "disparaging" subject matter.(28)

   In fashioning its test for "disparaging" subject matter, however, the Board created a far more liberal standard than the test for "scandalous" subject matter. Section 2(a) of the Lanham Act denies registration to a mark that "[c]onsists of or comprises ... scandalous matter."(29) The statute does not specify whose sense of propriety must be offended to render a mark scandalous. Case law has established that for a trademark to be denied registration as "scandalous," it must give offense to "a substantial composite of the general public."(30) That is, the subject matter must violate the mores of "American society as a whole."(31)

   In contrast to the anonymous nature of "scandalous" subject matter, the Harjo Board noted that "disparage" in section 2(a) targets an identifiable object such as a person, institution, belief, or national institution.(32) Moreover, the Board noted that while section 2(a) bars subject matter that is scandalous, it prohibits subject matter that may be disparaging.(33) According to the Board, this statutory language "shifts the focus to whether the matter may be perceived as disparaging."(34) Since section 2(a) refers to an identifiable target of disparagement, the Board concluded that whether a trademark might be disparaging would be determined not by the views of American society as a whole, but by the views of the referenced group.(35) In short, if a group feels disparaged by a trademark, the mark may not be registered under the Lanham Act.(36)

   With this broad standard, it was an easy matter for the Board to conclude that the Redskins' marks might have disparaged Native Americans or brought them into contempt or disrepute at the time the registrations were originally granted.(37) The Board was presented with dictionary notations that "redskin" was an offensive term, linguistic testimony on the historical usage of "redskin" in print, and a video montage of Hollywood movies in which "redskins" was used as a derogatory term for Native Americans.(38) Although the inquiry was on the significance of "redskin" at the time of registration, a telephone survey of current attitudes towards the term "redskin"(39) and even the boorish behavior of Redskins fans(40) helped the Board conclude that "redskin" was a term that Native Americans might have perceived as disparaging. Although the Board declined to find "redskin" sufficiently "shocking" to the general public to constitute "scandalous" subject matter,(41) it had little difficulty in concluding that the term was derogatory enough that the Redskins' marks might have been perceived as disparaging by Native Americans, or might have brought them into contempt or disrepute.(42) Consequently, the Board directed that REDSKINS and its...