Washington’s Trademark Hail Mary

Hello everyone,

Before I get to the task at hand, I would like to make an announcement.  I’m going to start my own law firm, Nicotera Legal, LLC.  My firm will provide a variety of different intellectual property and contracting services to clients in the DC Metro area, so please check out my site.

Now that my shameless plug is out of the way, let’s turn to the major trademark news of the day.  My hometown football team, the Washington Redskins (referred to here on out as Washington, due to the offensive nature of the mascot name) continues its long lawsuit against the United States Patent and Trademark Office (USPTO) to preserve its ownership of the trademark in the team’s name.   Yesterday, Washington’s legal team submitted its opening brief for the appeal of the USPTO’s earlier decision to invalidate the team’s trademark.  This complaint contained a new legal strategy: argue that Washington’s team name is hardly the only potentially offensive trademark currently registered by the USPTO.  What followed was a litany of hilarious tasteless marks (mostly, as the Post points out, registered by porn, beer, and clothing companies) cited in an attempt to argue that the USPTO unfairly singled out Washington’s mascot name.  Furthermore, Washington argued that having refusing to register “disparaging or offensive” marks infringes on a company’s First Amendment Free Speech rights.

Even though the meat of Washington’s arguments lie with the First Amendment, let’s focus on the “arbitrary and capricious” aspect of the brief.  While reading the marks cited makes for solid entertainment during lunch (there aren’t many circumstances where a legal blog can cite marks such as “Slutseeker Dating Service” or “Yid Dish” after all), there is a larger question regarding whether Washington’s central legal argument, claiming that the Trademark Trial and Appeals Board’s (TTAB) was arbitrary, has any merit.  In truth, Washington has a leg to stand on in this regard.  Administrative agencies such as the USPTO have the authority to conduct their own hearings and trials on matters related to their congressional mandate (such as trademark law in the case of the USPTO).  While the court system generally defers to these decisions, a party can appeal these administrative law decisions based on a couple of grounds (as laid out in the Administrative Procedure Act, or APA).  One of the most common grounds for seeking an appeal of an administrative law decision to a federal court is claiming that the agency’s decision was arbitrary and capricious, where the party claims that the agency provided no reason for a decision or failed undergo a serious inquiry when approving a regulation.

The court will have to evaluate whether they agree with this argument.  One issue Washington has is that the TTAB does not consider their rulings on individual trademarks to represent precedent.  In other words, the USPTO considers trademarks individually and does not cite to other trademarks as a way of justifying a decision.  This complicates Washington’s legal argument, since the USPTO’s attorneys can easily state that their decisions are not arbitrary in that they only take each mark in its individualized context.  This will make it much harder for Washington to prevail with their argument that their rejection was arbitrary and capricious.

The First Amendment argument is an interesting one.  Washington’s argument, in short, is that a trademark does not represent a government enforcement and that rejecting a trademark for offensiveness reasons restricts otherwise valid speech.  In my opinion, the court’s decision here will depend on how they view the purpose of a trademark.  Will the court see a trademark as a form of expression or a specialized monopoly granted only to promote business interests?  Trademarks represent a kind of government created monopoly, allowing a particular party to restrict the use of particular words in commerce.  This analysis is complicated by the fact that Washington could continue using the name to promote the team even without a valid trademark but they could not stop other parties from doing the same.  Indeed, as Eugene Volokh points out, the government generally cannot deny a broadly available benefit to private actors based on their viewpoints.  Whether the use of a potentially offensive mascot name is really a “viewpoint” is debatable, but there is a potentially valid argument that the government cannot deny a trademark based on perceived offensiveness under this First Amendment requirement to remain content neutral in the allocation of government provided benefits like trademarks.  Whether the court chooses to go down this path remains to be seen.

Have a great day everyone and, again, check out Nicotera Legal, LLC.


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