Intellectual property lawyer laments trademark ruling

U.S. Supreme Court’s decision appears to foreclose challenges to NFL team’s trademark

By Mike Mosedale
BridgeTower Media Newswires

MINNEAPOLIS — At the start of his legal career, Steve Baird had a Eureka moment that fueled a legal and political fight whose reverberations have been felt across the country for the past quarter century.

On Monday, the U.S. Supreme Court kicked the legs out from under the law that undergirded Baird’s pioneering effort.

As you might imagine, Baird, who now the chair of the intellectual property practice at the Minneapolis firm Winthrop & Weinstine, reacted to the news with a measure of dismay.

“It’s the exact opposite of what I hoped for,” Baird said of the ruling, which struck down a 70-year old provision of federal trademark law that barred the registration of “disparaging” trademarks. “My heart goes out to those who invested so much time and money pursuing these kinds of claims.”

Baird’s long history with the issue dates back to 1992 when, as a first-year associate at the Dorsey & Whitney firm, he came up with an idea that he hoped would make the Washington Redskins football team abandon a nickname he and many Native Americans consider racist.

At the time, the mascot and team name controversy was heating up in Minnesota amid protests ignited by a pair of high-profile championships at the Metrodome: the 1991 World Series, which pitted the hometown Twins against the Cleveland Indians (and their controversial mascot, Chief Wahoo), and the 1992 Super Bowl, where the aforementioned Washington Redskins defeated the Buffalo Bills.

As Baird was putting the finishing touches on a law review article, it occurred to him that a little noted provision of the law he was writing about — the Lanham Act — could provide the ideal toehold for Native American activists.

Under the act’s “anti-disparagement clause,” individuals were authorized to petition the federal government to cancel registration of trademarks found to “disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”

While the broadly worded provision had been on the books since 1946, Baird’s research showed that no third party had ever invoked it to force the cancellation of an existing trademark.

On a trip to Washington, D.C., Baird pitched his idea to the Native American activist Suzan Harjo. Harjo was intrigued. So after getting the green light from his bosses at Dorsey to take the pro bono case, Baird put his theory to test and cobbled together a petition to the Trademark Trial and Appeal Board.

“It was viewed by many as a silly challenge that would never go anywhere,” Baird recalled.

But as it turned out, Baird’s insight launched a battle that continued unabated for more than two decades.

For nine years, Baird worked on the case and, following his departure from Dorsey, tracked developments as other lawyers, adopting his theory, notched a series of legal victories.

Those wins culminated with a 2015 ruling from U.S. District Judge Gerald Lee of the Eastern District of Virginia who upheld the cancellation of six of the club’s trademarks on the ground that they “may disparage a substantial composite of Native Americans.”

The fight over the team’s name – the legal fight, at least – was upended again on Monday when the U.S. Supreme Court, ruling in a separate case, struck down the Lanham Act’s anti-disparagement clause as unconstitutional.

“We now hold that this provision violates the Free Speech Clause of the First Amendment,” Justice Samuel Alito wrote. “It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

In an interview, Baird said he was frustrated by the court’s reasoning, beginning with that opening salvo from Alito.

“I think the court conflated the act of registration [of the trademark] by the government with the content of the trademark in question. There is no speech being banned in this case. What would be banned was the circle ‘r,’” opined Baird. “But the Supreme Court has spoken and there’s no other court to say that they got it wrong.”

The case before the court involved an Asian-American rock band called “The Slants,” who sued after the Patent & Trademark Office declined to register the band’s name as a trademark. From the outset, The Slants insisted that they had no intention to disparage. As their attorneys argued in a brief to the high court, rather, they were “fighting bigotry with the time-honored technique of seizing the bigot’s own language.”

But like the Washington Redskins, who were simultaneously trying to get their challenge before the high court, The Slants said they had a constitutional beef with the anti-disparagement clause, as well as the Patent and Trademark Office’s “haphazard” application of the rule.

In an amicus brief to The Slants case, Pro-Football, Inc. — the football team’s corporate identity — listed 18-pages worth of PTO-approved trademarks that would seem to run afoul of the anti-disparagement rule, including “HALF-BREED” (for a line of hats), “BAKED BY A NEGRO” (baked goods), and “YELLOWMAN” (clothing).

That may have been persuasive to the court but, in Baird’s view, inconsistent applications of trademark law are hardly confined to the PTO’s invocations of the anti-disparagement clause.

“You can see the same kind of inconsistency if you were to look at likelihood-of-confusion cases,” said Baird. “You get a wide range of zeal depending on the examining attorney you draw.”

While the decision only strikes down the disparagement clause, most experts agree that the court’s rationale will prove fatal to a separate provision of the Lanham Act which bars registration of trademarks for “immoral, deceptive, or scandalous matter.”

Some lawyers, including Baird, fear that means that the government will now be forced to not only approve trademarks with racist connotations but also to approve those that are profane and vulgar.

J. Michael Keyes, a trademark lawyer in Dorsey’s Seattle office who was not involved in either the Redskins or The Slants litigation, agreed with Baird that the scandalous and immoral provision is likely toast.

“Under the court’s reasoning, those are both content-based restrictions,” said Keyes. But he was more skeptical of the notion that the court’s ruling would open the floodgates to a torrent of offensive trademark applications.

“I don’t see it,” said Keyes. “From a practical point of view, in order to obtain a trademark registration, you have to establish that you’ve got commercial rights associated with it and the only way to do that is to show that you’re actually using it in commerce.”

But the court’s decision does appear to foreclose further challenges to the Washington Redskins’ trademark and, on Twitter, team owner Daniel Snyder pronounced that he was “THRILLED” with the ruling.

In Baird’s view, Snyder shouldn’t be gloating.

“This decision does nothing to invalidate the decisions from a federal court and two Trademark and Trial Appeal Boards saying his team’s name is a racial slur that offends Native Americans,” he said. “I have no doubt that Daniel Snyder hasn’t heard the end of protests about his team’s name.”

“I think the silver lining is all the awareness and attention this issue has received over the past quarter century and the hundreds of [sports team] names that have been changed as a result of that awareness,” he added.

And despite the apparent death blow to his former client’s case, Baird said it was “very gratifying” to be part of the Native American community’s effort to be heard. “We were making law,” he said. “It had never been done before.”