The tangled history of Pro Football, Inc (PFI) and the issue of disparaging trademarks is back in the spotlight with recent accusations of bribery and an anti-Washington Redskins prime time commercial from the National Congress of American Indians.

Currently, the US District Court is considering an appeal of the decision by the US Patent and Trademark Office (USPTO) to cancel six federal trademark registrations for the mark “Washington Redskins”. One of the grounds for appeal by PFI is that the provisions in the Lanham Act (15 U.S.C. §1052), which allow the USPTO to decline to register a mark, are an infringement of their First Amendment rights.  Recently, a SCOTUS case involving the Confederate flag on licence plates was added into the mix when the two sides in Blackhorse v Pro Football, Inc. argued whether a trademark registration is a form of government speech.

On June 18th (less than a week before a hearing for Blackhorse), the Supreme Court of the United States decided Walker v Sons of Confederate Veterans. The Sons of the Confederate Veterans (SCV) wanted the Confederate flag on their licence plates and applied to a Texas program that allowed community groups to request the creation of specialty licence plates. Texas denied their request on the grounds that many people find the Confederate flag offensive. SCV sued, arguing that the government’s rejection of their licence plate was an infringement of their First Amendment rights. In response, Texas argued that licence plates were a form of government speech rather than private speech, and that the First Amendment did not require the government to perform any speech that members of the public might wish them to perform. SCOTUS sided with the government, holding that Texas is not obligated to issue licence plate designs that it feels are inappropriate.

USA Today reported that in the hearing on June 23rd, District Court Judge Gerald Lee asked the parties whether the decision in Walker should impact the questions in Blackhorse.

The SCV case resembles arguments the US Department of Justice submitted for Blackhorse. The Department of Justice did not address the specific content of PFI’s marks, nor did it address whether or not the marks are disparaging, but it did address the constitutionality of the Lanham Act provisions. The Department argued that refusing to register the mark did not preclude the owner from using the mark. Additionally, it argued that the act of registering the mark would imbue it with the government’s authority, making the registration a form of government speech rather than strictly private or commercial speech. Thus, the government would not be infringing the First Amendment rights of the mark owner by refusing to register it, but rather protecting the government's own right to choose which speech to perform.

The news report states that PFI’s lawyer attempted to distinguish Blackhorse from Walker on the grounds that licence plates are more obviously government speech than trademark registrations, that is, issuing a licence plate bearing a state’s name and a Confederate flag together can appear to be a government endorsement of the owner's appreciation of the flag, while registering a trademark would not confer the same endorsement.  "No one looks at a Coke can and sees the federal government speaking”, stated PFI's lawyer.

The lawyer for Blackhorse lawyer on the other hand, is reported to have argued that the reason for disallowing the licence plates and the reason for disallowing the trademark are strikingly similar. He also noted that a registered trademark allows the use of the circle-R, which does attach a level of government expression to the mark.

The fight to have PFI’s marks declared disparaging has been long and difficult, and it has taken multiple sets of Native American complainants to bring the case to this point. Regardless of the outcome of this hearing, it is likely that further appeals will follow, making the fight far from over. But current events suggest that Americans are particularly attuned to issues of race and symbols of disparagement at the present time. Hopefully American courts will prove to be as well.


Jacquilynne Schlesier is an IPilogue Editor and a JD candidate at Osgoode Hall Law School.