Washington Redskins claim trademark cancellation unconstitutional
Published 19 August 2014
By: Joseph M. Hanna
On Thursday, August 14, The Washington Redskins football team filed a complaint in the united states district court for the eastern district of Virginia against the five petitioners who sought the cancellation of their six federal trademark registrations protecting the term “Redskins.” The complaint seeks to have the petitioners’ victory overturned, reinstating the trademarks.
In June, a three judge panel, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office cancelled the team’s six federal trademarks protecting their name, “Redskins.” The judges determined that the term “redskin” violated § 2(a) of the Lanham Act which trademark registrations that “may disparage” groups or individuals.
The new lawsuit, filed by the Washington Redskins, argues that the decision should be reversed because § 2 of the Lanham act is rarely used, unconstitutional on its face, and void for vagueness. The team further argues that the board made its decision erroneously, failing to restrict its analysis on the relevant time period. The patents were issued between 1967 and 1990, and, as such, the board was supposed to only consider whether the term “redskin” was disparaging at the time the patent was issued.
Central to the Redskins’ argument is a constitutional challenge to § 2 of the Lanham Act. The complaint alleges that, because the board was not comprised of Article III judges, it could not consider the serious constitutional issues implicated. The team is alleging the Lanham Act effectively chills speech protected by the First Amendment to the United States Constitution. The team relies on its long history and impressive fan base to also allege that the denial of the trademarks is an improper taking of the teams property without just compensation in violation of the Fifth Amendment.
The five petitioners, however, appear ready for a fight. The petitioners’ attorney, Jesse Witten, stated that he was not surprised by the filing and that he is ready for it, and is prepared with some surprises. One of the plaintiffs, Anna Blackhorse, has been vocal about the lawsuit, showing confidence that she will be victorious, citing a previous denial of the trademarks in 1999 that got overturned on a technicality. This time, the technicality has been taken care of.
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Joseph Hanna is a partner of Goldberg Segalla and concentrates his practice in commercial litigation with a focus on sports and entertainment law and retail, hospitality, and development litigation. Joe represents sports franchises, professional athletes, and movie studios with various issues related to licensing, contracts, and day-to-day management. He serves as Chair of Goldberg Segalla’s Sports and Entertainment Law Practice Group and editor of the firm’s Sports and Entertainment Law Insider blog. In addition, Joe is the Chair of Goldberg Segalla's Diversity Task Force. He possesses an AV rating from Martindale-Hubbell.