On July 15, 2015, we discussed the decision of the United States District Court for the Eastern District of Virginia in Pro-Football, Inc. v. Amanda Blackhorse, et al.  In Pro-Football, the District Court affirmed a decision by the United States Patent and Trademark Office directing the cancellation of six “REDSKINS” trademark registrations owned by the Washington Redskins NFL Team.  Although that decision remains on appeal to the Fourth Circuit Court of Appeals, a split en banc Federal Circuit Court of Appeals decision issued earlier today may foreshadow a potential victory for the Washington Redskins.

Today’s decision in In re: Simon Shiao Tam, arose in a separate lawsuit, filed by members of a band called The Slants, who sought trademark registration of the band’s name.  The registration had been refused by the United Stated Patent and Trademark Office (“USPTO”) pursuant to Section 2(a) on the Lanham Act on the ground that the mark was disparaging to Asian Americans.

In reversing that decision, the Federal Circuit struck down Section 2(a) of the Lanham Act, concluding that Section 2(a), first signed into law in 1946, violates the First Amendment of the U.S. Constitution.  Writing for the majority, Chief Judge Kimberly Moore acknowledged that “invalidating this provision may lead to the wider registration of marks that offend vulnerable communities,” but nevertheless concluded “[w]hatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others.”

The decision will almost certainly have broad implications, most notably because the District Court opinion in the Washington Redskins case was predicated on the USPTO’s authority under Section 2(a) of the Lanham Act to refuse registration to marks that may be disparaging or offensive.  To the extent the Fourth Circuit is persuaded by the Federal Circuit’s decision, or if the Supreme Court affirms the Federal Circuit’s reasoning, it could spell victory for the Washington Football Team.

Today’s 111-page decision in In re: Simon Shiao Tam was not without dissent.  In one of two dissenting opinions, U.S. Circuit Judge Alan D. Lourie wrote “one wonders why a statute that dates back nearly 70 years — one that has been continuously applied — is suddenly unconstitutional as violating the First Amendment.  Is there no such thing as settled law, normally referred to as stare decisis?”  If there is one thing that is certain, it’s that the Washington Redskins will be anxiously awaiting further answers to that question.

The United States Court of Appeals for the Federal Circuit’s decision in the “SLANTS” case is In Re Simon Shiao Tam, Case No. 2014-1203.

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