By Kaylea Weiler, SmithAmundsen LLC
On October 31, Federal Judge Gerald Bruce Lee of the United Stated District Court for the Eastern District of Virginia ruled that the Native American individuals who successfully petitioned the Trademark Trial and Appeals Board (TTAB) to cancel six trademarks held by the Washington Redskins football team were properly named in the team’s Complaint seeking to overturn the TTAB’s cancellation decision. Judge Lee indicated that he would be issuing a written opinion explaining his decision “at a later time.”
Since the ruling came down after the parties’ oral argument on Friday, the media has fired a storm of negative commentary, couched in seemingly unbiased terms, in the direction of the football team and its owner, Dan Snyder, and even Judge Lee. Headlines read: “Washington Redskins suing Native Americans Offended by Team’s Name,” (People Magazine) “Redskins clear to sue Native Americans—for now” (MSNBC), “Judge Bruce Lee Ruled: Redskins Can Sue Native Americans” (Newswire), “Let Native Americans Decide What’s Offensive to Them” (USA Today).
What these sources are failing to explain is the procedural nature of the action. Use of the word “sue,” though technically accurate, instills in the reader a feeling that the team and its owner, in an act of hostility and aggression, are dragging innocent parties into court unnecessarily. This is far from the case. It has been clear since the TTAB’s cancellation decision came down in June that the team was going to appeal this decision in an attempt to protect the valuable trademarks which it spent decades building up. That the Native American group who initiated the cancellation proceeding would remain a part of the litigation should not be surprising to anyone. In fact, it is a bit surprising that they would not want to be involved in order to oppose the team’s arguments as to why the TTAB cancellation should be overturned.
When a party is unhappy with a TTAB ruling, it has two options of where to bring a challenge to such a ruling. It can directly appeal the decision to the United States Court of Appeals for the Federal Circuit, a court not created by Article III of the Constitution, but created by an Act of Congress. The Federal Circuit specifically has jurisdiction to hear cases whose subject matter involves patent and trademark issues and can hear appeals of decisions rendered by the TTAB and other Administrative Agencies. The other option is to file a civil action in any other U.S. court having jurisdiction. See 15 U.S.C. A. § 1701(b)(1).
Here, the Redskins wisely chose the latter option, filing its Complaint in the U.S. District Court for the Eastern District of Virginia, which sits in the Fourth Judicial Circuit. This choice of venue will be important moving forward, because as indicated in the team’s Complaint, the Fourth Circuit has recently held that TTAB challenges before it are reviewed de novo, meaning that the court need not give deference to the TTAB’s decision or the reasoning behind its decision. See Swatch AG v. Beehive Wholesale, LLC, 739 F. 3d 150 (Oct. 2013).
The complaint alleges that the TTAB’s finding that the trademarks are disparaging is erroneous, because there was not enough evidence to support such a conclusion. It then refers to the “relevant inquiry” to be considered by the TTAB and a reviewing court, which is whether the marks were disparaging to a “substantial composite” of Native Americans at the time the marks were registered. The team’s complaint quotes the dissenting opinion from the TTAB decision in noting, “…petitioners did not submit any evidence or argument as to what comprises a substantial composite of that population…” It also references the 2003 Harjo decision, which found that there was not sufficient evidence to support a conclusion that the marks were disparaging at the relevant times.
Because the complaint challenges the evidence presented by the Native American individuals who brought the cancellation action, they are necessary parties to the action. In fact, Judge Lee indicated that dismissing action against them at this stage of the litigation would be unprecedented.
The complaint also argues that Section 2(a) of the Lanham Act is unconstitutional as applied because it “penalizes the Redskins for communicating to the public (information pertaining to the team’s long history and rich tradition) based on the marks’ content,” in violation of the team’s First Amendment right to freedom of speech. Additionally, the team argues that the cancellation of its marks constitutes a taking of its property without just compensation, in violation of its due process rights. Because these claims are made in the complaint, the team argues its challenge could not have been brought before the Federal Circuit, which has no jurisdiction to resolve constitutional issues.
Protests which took place in the days following Judge Lee’s decision make it clear that the Redskins trademarks are disparaging to a significant portion of the Native American population today. Even President Obama has stated that he’d “think about changing the name” if he were in Snyder’s shoes. However, the court of current public opinion will play little, if any, role in whether the Eastern District of Virginia will uphold the TTAB’s decision to cancel the marks.
This post was written by Kaylea Weiler, SmithAmundsen LLC. If you would like to submit content or write an article for the Intellectual Property Section page, please email Mary Kay Price at firstname.lastname@example.org.