On June 24, 2014, we discussed the decision of the United States Patent and Trademark Office that granted a petition for cancellation of six “REDSKINS” trademark registrations owned by the Washington Redskins NFL team. The owner of the marks, Pro-Football, Inc. or “PFI”, appealed the decision to the United States District Court for the Eastern District of Virginia. Last week, PFI lost its appeal. The District Court affirmed the decision of the Patent and Trademark Office and directed the office to schedule the cancellation of the six “REDSKINS” trademark registrations. As a result, these marks will be removed from the Patent and Trademark Office’s Principal Register.

In support of its decision, the District Court reasoned: (i) the marks do not implicate the First Amendment, and even if they did, the federal trademark registration program is considered “government speech,” which is exempt from First Amendment scrutiny; (ii) because a trademark registration is not “property” under the Fifth Amendment, there was no unlawful taking from PFI or violation of PFI’s due process rights by the government in granting the petition for cancellation; and (iii) the overwhelming evidence shows that the marks “may disparage” a “substantial composite” of Native Americans during the time period in which the marks were registered, i.e. 1967-1990.

The District Court clarified that its decision does not prevent PFI from continuing to use the marks in commerce, nor does it prevent fans from wearing, collecting, or displaying the marks. As the Court noted, however, whether PFI continues to use the marks as the Washington Football team’s logo requires an exercise of business acumen. PFI will now need to consider what impact, if any, the continued use of the canceled marks will have on ticket sales and general interest in purchasing and wearing the team’s gear containing the marks.

The United States Patent and Trademark Office decision is Blackhorse v. Pro-Football, Inc. 111 U.S.P.Q.2d 1080, 2014 WL 2757516 (T.T.A.B. 2014).

The United States District Court’s decision is Pro-Football, Inc. v. Amanda Blackhorse, et al., 1:14-cv-01043-GBL-IDD.