Washington Redskins Haven’t Won Yet: Why the Constitutionality of Section 2(a) is Not Yet Final

What do Washington D.C.’s NFL team, the Redskins, and Mr. Tam’s rock band, The Slants, have in common? Both have enjoyed unexpected victories recently and both have been called “disparaging” by the Patent and Trademark Office (“PTO”). However, while the Washington Redskins have been winning on the football field, many legal and business news websites have also been counting Mr. Tam’s recent success at the Federal Circuit as a major win for the football team. In reality, that issue is far from settled.

The Federal Circuit first took up the issue of Mr. Tam’s trademark last spring when it affirmed the PTO’s rejection of his application to register the mark “THE SLANTS,” the name of Mr. Tam’s Asian-American dance rock band that is known for its intentional use of Asian stereotypes in its lyrics and imagery in order to weigh in on cultural and political discussions about race and society. Despite the ruling adverse to Mr. Tam, Judge Moore went on to write a lengthy argument addressing the need for a deeper constitutional review of the statutory prohibition against disparaging marks, as codified in Section 2(a) of the Lanham Act. In re Tam, 785 F.3d 567 (Fed. Cir. 2015). This opinion teed up the en banc review by the Federal Circuit, which issued a pivotal opinion on December 22, 2015 overruling prior precedent, In re McGinley, 660 F.2d 481 (C.C.P.A. 1981), and held that the prohibition against registering disparaging marks at the PTO under Section 2(a) of the Lanham Act is an unconstitutional restriction on free speech. In re Simon Shiao Tam, No. 2014-1203, 2015 U.S. App. LEXIS 22300 (Fed. Cir. Dec. 22, 2015).

Based on the Federal Circuit’s ruling, the media immediately decreed victory for the Washington Redskins’ trademark battle, but there are reasons that the recent Federal Circuit ruling is not likely to be the last we hear of this issue:

First, the Federal Circuit is split. While 9 judges agree that the disparaging marks prohibition in Section 2(a) is entirely unconstitutional, the remaining 3 raise some valid concerns in partial or total disagreement. For example, writing for the Majority, Judge Moore places a great deal of importance on the chilling effect such regulation has on expressive speech. However, Judge Reyna and Judge Laurie argue in dissent that the Majority’s analysis is flawed from the very beginning as trademark registration is commercial speech, as was held in precedential opinions, and thus not subject to heightened scrutiny. Meanwhile, Judge Dyk attempts to draw a distinction between “core political speech” and “commercial speech” in trademarks. In the concurrence in part and dissent in part, Judge Dyk argues that the Majority is correct only as to a narrow category of trademarks which contain core political speech, but the statute remains constitutional as to the bulk of trademarks which are merely commercial speech. This fundamental disagreement as to what is or is not commercial speech is exactly the sort of issue that the Supreme Court may take up. In the dissent, Judge Reyna poignantly summarizes the disagreement: “The Majority holds today that Mr. Tam’s speech, which disparages those of Asian descent, is valuable political speech that the government may not regulate except to ban its use in commerce by everyone but Mr. Tam.”

Second, the Redskins’ mark is pending review before a different tribunal. The Redskins are currently appealing to the Fourth Circuit an adverse ruling by a U.S. District Court following the TTAB’s cancellation of the team’s mark recently. In doing so, the TTAB cited the same prohibition against registering disparaging marks under Section 2(a) at issue in the recent Federal Circuit opinion. While the Federal Circuit’s opinion will surely be influential to the Fourth Circuit, it is not precedential and the Fourth Circuit is not required to follow it. Thus, immediate victory for the Redskins is not guaranteed. Furthermore, should the Fourth Circuit rule in any way different than the Federal Circuit on determining constitutionality of Section 2(a), this circuit split would set up a likely Supreme Court review.

Third, the constitutionality of Section 2(a) as to immoral and scandalous marks is now unclear. While the Majority was careful to mention several times that their opinion concerns only the prohibition against registering disparaging marks, Section 2(a) also prohibits registering immoral and scandalous marks. Indeed, the Redskins mark may still be challenged under either of those additional prohibitions at a future date. To some, the logic and reasoning of the recent Federal Circuit ruling may be equally applicable to those prohibitions; both additional prohibitions can be categorized as content based and/or viewpoint based regulation of non-commercial expressive speech that fails the constitutional test of strict scrutiny. To others, there may be reasons to distinguish the Federal Circuit’s ruling as to the other Section 2(a) prohibitions; the prohibition against registering immoral and scandalous marks isn’t as vague or the effect isn’t as chilling on expressive speech. The Supreme Court may be interested in settling this discrepancy before the PTO is flooded with new registrations of offensive marks.

Despite their recent wins on the field, the Redskins’ Super Bowl prospects are still uncertain. The prospects of the team’s trademark registration remains similarly uncertain, despite the recent Federal Circuit holding.

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