Constitutional Disparagement? : Legal Challenges to Racist Imagery

By Tom Topping
Associate Editor, Vol. 21
Contributing Editor, Vol. 22

redskinsIn 2015 an activist group named People Not Mascots became one of the latest organizations to file a complaint with the U.S. Patent and Trademark Office seeking to have a disparaging image’s federal trademark revoked. The target of this complaint is the Cleveland Indians Chief Wahoo mascot. The logo, shown at left, portrays a caricature of a Native American and has been criticized by many as racist and insensitive. Acknowledging the controversy over Chief Wahoo, team owner Paul Dolan has said that while the team has minimized the use of the logo, they have no plans to eliminate it.

The USPTO action over Chief Wahoo is part of a larger movement of ongoing legal actions seeking to end the use of racist names and imagery by sports teams. The most high profile of these actions arose in 2014 when the USPTO revoked the trademark of the Washington Redskins on similar claims of disparagement.

The USPTO derives its authority to revoke disparaging trademarks from Section 2(a) of the Lanham Act, which prohibits anyone from registering a trademark that disparages a particular group of people.[1] Registration of a trademark does not confer ownership of the logo to a particular party.[2] Therefore, revoking federal registration does not prohibit a party from using the trademark. However, registration provides important federal benefits including, but not limited to, the right to sue in federal court to enforce the mark and the right to recover treble damages if the mark is willfully violated.[3] Many anti-racist groups see the withdrawal of federal protection as a significant victory.

Recently, the United States Court of Appeals for the Federal Circuit dealt a blow to the ability of the government to revoke disparaging trademarks. In In re Tam, the court found Section 2(a) of the Lanham Act unconstitutional.[4] The court ruled that the law constituted viewpoint discrimination, calling it “a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys.”[5] According to the court, the fact that prohibiting registration does not actually revoke the right to use the mark does not matter, as the prohibition on viewpoint discrimination “governs even when the government’s message-discriminatory penalty is less than a prohibition.”[6] Of significant concern to the court was the act’s complete prohibition of any “disparaging” mark. This provision provides little guidance on the limits of what would be deemed “disparaging” and “such uncertainty of speech-affecting standards has long been recognized as a First Amendment problem.”[7]

This is not necessarily the end of the issue. The Fourth Circuit is currently considering the Redskins case, and could come to a different decision. The dissenting justices in In re Tam provide some ideas as to how the Fourth Circuit might rule if it is inclined to uphold the act. Judge Lourie advanced three arguments as to why the act should be held constitutional. First, the federal courts have upheld the statute for decades and should continue to do so on stare decisis grounds.[8] Second, the trademark constitutes government speech, and can be regulated under the same justification that allows the states to ban offensive license places.[9] Finally, the act does not actually take away the right of the individual to use the mark, it just removes the protections that go along with federal registration.[10] In a separate dissent, Judge Reyna argued that the government does have a substantial interest in the ban on disparaging trademarks because the ban advances the orderly flow of commerce.[11]

The USPTO has issued an examination guide describing how it will move forward in light of the Federal Circuit’s decision. According to the document, the USPTO will continue to recommend denying federal trademarks until the Supreme Court either grants or denies certiorari on the matter. The Supreme Court will almost certainly take the case if the Fourth Circuit upholds the revocation of Washington’s trademark. Even if the Fourth Circuit agrees with the Federal Circuit, however, the Supreme Court will hopefully still take the case, as the Lanham Act is over 70 years old and provides the federal government with an important tool for combating racism in the commercial sphere. For now, the complaint against Cleveland Indians will move forward with a good chance of success. The final word, however, will lie with the judiciary.

[1] 15 U.S.C §1052(a).

[2] 3 McCarthy on Trademarks and Unfair Competition § 19:3 (4th ed.).

[3] In re Tam, 808 F.3d 1321, 1329 (Fed. Cir. 2015).

[4] Id.

[5] Id. at 1327.

[6] Id.

[7] Id. at 1342.

[8] Id. at 1375 (Lourie, J., dissenting).

[9] Id.

[10] Id.

[11] Id. at 1376 (Reyna, J., dissenting).