While intellectual property law is usually far afield from my area of expertise, I was drawn to the recent decision by the Trademark Trial and Appeal Board, finding that the Washington Redskins trademark was “disparaging.” I don’t have any thoughts here on the underlying factual merits of the decision, or of the effect of the TTAB’s decision. Rather, my interest focuses on whether the statute that exempts disparaging trademarks violates the First Amendment.

The leading precedents on point from the Federal Circuit are, to put it mildly, poorly reasoned.

In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1343 (Fed. Cir. 2003):

Boulevard contends that the application of section 1052(a) to refuse the registration of marks on grounds of vulgarity violates the First Amendment. Previous decisions of this court and our predecessor court, however, have rejected First Amendment challenges to refusals to register marks under section 1052(a), holding that the refusal to register a mark does not proscribe any conduct or suppress any form of expression because it does not affect the applicant’s right to use the mark in question. See Mavety, 33 F.3d at 1374; McGinley, 660 F.2d at 484. We adhere to the reasoning set forth in those cases and reject Boulevard’s First Amendment challenge.

McGinley,660 F.2d at 484, 211 USPQ at 672:

With respect to appellant’s First Amendment rights, it is clear that the PTO’s refusal to register appellant’s mark does not affect his right to use it. No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, appellant’s First Amendment rights would not be abridged by the refusal to register his mark.

In re McGinley, 660 F.2d 481, 484 (C.C.P.A. 1981)

With respect to appellant’s First Amendment rights, it is clear that the PTO’s refusal to register appellant’s mark does not affect his right to use it. Holiday Inn v. Holiday Inn, Inc., 534 F.2d 312, 319 n.6, 189 USPQ 630, 635 n.6 (Cust. & Pat.App.1976). No conduct is proscribed, and no tangible form of expression is suppressed. Consequently, appellant’s First Amendment rights would not be abridged by the refusal to register his mark.

As I understand it, the Redskins have the option of appealing to federal district court rather than the Federal Circuit. The district court would not be bound by this First Amendment caselaw, so this may be a preferable path. I can’t see any other federal court reaching a similar conclusion.

Eugene Volokh, David Post, and Jonathan Turley weighed in, suggesting this statute,  as applied, was unconstitutional. Also on point is a 14-year-old article by now-Professor Jeffrey Leftstin, titled “Does the First Amendment Bar Cancellation of Redskins?”

Thanks to Lowell Jacobson and Irina Manta for their help with this post.