Trade Mark Registration: Where Creativity and Censorship CollidePosted January 8, 2016 in IP News
In the 2014 landmark decision of Blackhorse v. Pro Football, Inc. the U.S Patent and Trademark Office ('PTO') decided to cancel six trade marks owned by the Washington Redskins ('the Redskins'), the renowned National Football League ('NFL') team because the registrations were doomed to be disparaging to Native Americans at the time the respective marks were registered. In light of this decision, it is worth revisiting the ongoing debate concerning the protection of full freedom of expression as it relates to trade marks versus the prevention of hate speech and the need for censorship in trade. The six cancelled trade marks were registered by the Redskins during the period beginning in 1967 through 1990 and these registrations were made for entertainment services relating to football exhibitions and games and performances rendered through the media of radio and television. This recent decision to cancel these marks not only highlight the ongoing conflict between potentially insulting trade marks and freedom of speech but initially appeared to give substantial teeth to the United States government’s ability to curtail freedom of speech on a retroactive basis.
The renowned name is over 80 years old and the related trade mark registrations are nearly 50 years old as the first mark was registered in 1967. Moreover, at the time of registration, there were no objections to the registrations of the proposed marks nor did the marks appear disparaging to the examiners at the PTO. However, at the request of five determined Native Americans who filed a petition to cancel the registration of these six marks on the basis that the marks (which included the Washington Redskins™, Redskins™ and Redskinettes™), consists of scandalous matter that disparage Native Americans and brings them in to contempt, ridicule and disrepute; the content and subject matter were heavily scrutinized post registration. In June 2014, the PTO scheduled the cancellations of the registrations on the basis that the Redskins' marks were disparaging to a “substantial composite” of Native Americans and therefore, should have never been registered in the first place.
Needless to say the Redskins in November 2015, filed an appeal to reverse the decision on the basis that the PTO’s unprecedented cancellation also violated the First and Fifth Amendments of the United States Constitution. The Redskins also alleged that cancelling a registration based on the Government’s disapproval of a trade mark discriminates against speech based on content and viewpoint. The Redskins appellate team appear to have a valid point as the PTO has approved several racist, vulgar, misogynistic and otherwise offensive trade marks. To list a few there are “DANGEROUS NEGRO™" T-shirts, “DUMB BLONDE™” beer and “BAKED BY A NEGRO™” bakery goods. This unprecedented retroactive ban on the Redskins trade mark emphasizes the ongoing debate between those who advocate limitless freedom of speech (i.e. speech without the confines of any rules or guidelines) and those who advocate freedom of speech within reason (i.e. speech without disparaging expressions).
It must be noted that the key to the Redskins branding strategy, like many other dominant brands in the professional sport and entertainment service industries such as the Atlanta Braves™, The Cleveland Indians™, Chicago Blackhawks™ and Kansas City Chiefs™; is the intentional objective to straddle the line between being tastefully effective and downright insulting and or derogatory. One justification for such branding is that the nature of professional sports in the entertainment industry dictates the necessity for the implementation of aggressive and ‘in your face’ branding and marketing strategies to popularize one's brand. This approach apparently gives brand owners creative license to promote politically incorrect vernacular and ‘taboo’ subject matter as a basis for commercialization of their brands. The intrinsic danger of this harrowing branding approach is of course, the fact that with the diversification of consumer base and a heightened awareness of the impact that multiculturalism has in commerce; comes the correlating result that the use of pejorative language in trade, continues to shift the goal post of acceptability and social norms which is evidently influenced by the passage of time. The test of what is 'disparaging' requires objective value judgments that change with social norms.
The obvious realization that cultural and social norms have changed with respect to the registration of potentially offensive trade marks can be illustrated by review of the PTO decision to register the Washington Redskins marks as originally applied for back in 1967. While the 2014 decision of the PTO found that Redskins marks were disparaging to a “substantial composite” of Native Americans in 1967, this clearly could not have been a significant finding in 1967 to warrant grounds for refusal and prevent these marks from being registered. Although there are specific guidelines for grounds for refusal within the US trade mark application process, it is clear that an apparent awareness as to the cultural sensitivities of Native Americans (or any other disparaged groups) may not have been fully understood at the time the initial application was reviewed. It is quite likely that had these sensitivities been expressly challenged and supported by disparaged Native Americans in 1967, the consequential result could have been a refusal to register trade marks that had been perceived as an disparaging trade marks at the outset.
Despite the registration of these marks, a closer consideration of the effect that a cancelled trade mark has on a brand owner is necessary. As was mentioned earlier, these marks have been used in connection with goods and/or services associated with the football league for the last 80 years. It cannot be denied that the Redskins has established ‘goodwill’ in connection with the usage of those six marks. Cancelling the team’s trade mark has the effect of diluting the Redskins brand because although the use of the mark can continue throughout the Redskin’s appeal of the decision, if the trade mark registration is ultimately cancelled, the overall effect is that those cancellations will dilute the brand. Where a brand is no longer effectively protected under trade mark law, the fact that the mark is unprotected, ultimately effects the proper monetization of that mark in other commercial endeavors. Specifically, where competing companies choose to capitalize on the use of the Redskin’s name or merchandise that would normally be protected under trade mark law. This could have a profound effect on the team’s profits and ultimately support the growing admonition for a revision of the name.
The regulations and guidelines as prescribed in the U.S. Lanham Act 1946 are even more difficult to adhere to when protagonist of First Amendment rights insist on the use of hostile and offensive terms in trade for legitimate, commercial uses, for political speech and as a means of empowerment. A brief consideration of the recent decision of the US Court of Appeal’s which found that in the matter of Re: Simon Shiao Tam, the initial restriction prohibiting the registration of the marks, “The Slants” as applied for by American musicians of Asian descent, was a violation of their First Amendment rights. The name, “The Slants” was adopted by the lead singer of the group in an effort to reclaim and take ownership of Asian stereotypes however, it encountered several obstacles on its road to trade mark registration. The initial finding of the lower court held that a decision not to overturn the decision to reject a mark should be upheld because the lower court's refusal to register the mark did not violate the First Amendment rights of the applicant in any way because that refusal by the PTO did not mean that the trade mark could not be used in commerce.
In December 2015, the U.S. Federal Appellate Court took a fundamentally different opinion to the commercial use of this term and Judge Kimberly More reasoned that, “Courts have been slow to appreciate the expressive power of trademarks…Words — even a single word — can be powerful. Mr. Simon Tam named his band The Slants to make a statement about racial and cultural issues in this country. With his band name, Mr. Tam conveys more about our society than many volumes of undisputedly protected speech.” Thereby reiterating the fact that the US Appeals Court recognized that the First Amendment protects all speech inclusive of hurtful speech. This decision therefore, underscores the fact that the use of pejorative verbiage has its place not only in legitimate, business practices but also as a tool for advocacy and free speech.
While the outcome of the Redskins’ appeal remains to be determined, it is apparent that the marginal lines between free speech and hate speech as it relates to trade mark registration will be assessed for years to come.
Perhaps the underlying lesson for trade mark attorneys and brand advisors, is the need to advise their clients on the weighty repercussions stemming from the use of pejorative verbiage in brash branding strategies, given the ever changing social norms. What may be considered artfully risqué and acceptable in trade today, may be outright offensive and worthy of trade mark cancellation tomorrow. The balance of maintaining our client's right to free speech continues to require skillful consideration, especially as the perspectives of a continually diversified consumer base, influence markets and impact the sensitivities of global players.
Attorney & Barrister-at- Law Rodger Outten counsels and represents clients on a spectrum of intellectual property matters and provides sound advice regarding trade mark, patent and industrial designs protections and strategies.
Rodger Outten can be contacted at: OuttenIP, Counsel & Attorneys 201 West Bay Street Nassau, Bahamas.
+1 (242) 601-5424.