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2009-2010 Supreme Court Term: (2) Court Refuses to Hear "Washington Redskins" Trademark Case

by Professor Will Huhn on November 16, 2009

in Constitutional Law,Wilson Huhn

     Earlier today the Supreme Court announced that it would not hear the case that had been brought against the owners of the Washington Redskins football team challenging their use of the name "Redskins" as a trademark.  The issue in the case was not the First Amendment or even the substance of Trademark Law; instead, the issue was whether the plaintiffs had brought their lawsuit in time, or whether it was barred by the doctrine of "laches."

     In 1967 the corporation that owns the Washington Redskins football team applied for and was granted a trademark for the name "Redskins."  Section 2 of the Trademark Act (15 U.S.C. 1052) specifically prohibits the registration of a trademark that is "scandalous" or that is "disparaging" towards persons, living or dead, or that brings them into "contempt" or "disrepute."  The law states:

     No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it – (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute ….

     In 1992 a group of Native Americans challenged the "Redskins" trademark on the ground that it was "scandalous" or "disparaging" within the meaning of Section 2 of the Trademark Act.  Despite the fact that the statute allows a trademark to be challenged at "any time," the company that owns the club defended on the ground of the equitable principle of "laches" – the principle that if a plaintiff delays in bringing a lawsuit, and the defendant is harmed by the delay, then the lawsuit is barred.  The owners of the team alleged that they had been harmed in two ways by the delay: first, it would now be difficult to prove or disprove whether the trademark was "scandalous" or "disparaging" in 1967 when it was issued, and second, the owners had, in the meantime, invested substantial capital in marketing the team under the trademark "Redskins," and accordingly it would be unfair to allow a lawsuit after all this time.  One of the plaintiffs in the case, Mateo Romero, only turned 18 in the year 1984, so the period of "delay" was only from 1984 to 1992.  Nevertheless, the lower courts eventually ruled in favor of the owners and found that this 8-year period of delay in challenging the trademark was unacceptable.  The plaintiffs appealed to the United States Supreme Court, but in its ruling today the Court refused to hear their appeal.

     I think that the use of the term "redskins" is offensive and insulting, but my understanding of the Constitution is that individuals and private companies are permitted to use offensive and insulting language, and may even incorporate such language into the name of a business.  If someone wants to operate a company that has a racial or ethnic insult in the name of the business that is their right under the First Amendment.  But that not mean that people have a constitutional right to obtain a trademark for such language – that the law should preserve the owners' use of such language from trademark infringement, thus protecting them for the use of racist terminology. 

     Nor, in my opinion, should the doctrine of "laches" apply in a case like this.  The doctrine of laches is a principle of "equity," that branch of the law that is concerned with justice and fairness – and if there were ever a case where justice and fairness would dictate that the plaintiffs should have their day in court, it would seem to be this one.  Any company that wishes to obtain a trademark for the use of a questionable racial or ethnic characterization as the name of their business should be willing to defend the trademark in a court of law, and not rely on a defense that amounts to saying, "We've invested a lot of time and money into the use of this disparaging language!"  Away with the doctrine of laches in such a case!  Let's have the courts decide whether or not the term "Redskins" is "scandalous" or "disparaging" within the meaning of the Trademark Act!

Professor Huhn has taught Constitutional Law at The University of Akron School of Law for more than 25 years.  Visit his website on Constitutional Law for information and links to sources and materials on Constitutional Law.

{ 2 comments }

Dan S. November 16, 2009 at 6:49 pm

Just curious, why wasn't this 'issue' resolved in 1967 or shortly thereafter? Surely, in that decade of protests and demonstrations, someone must have tried to stand up for the Disparaged Americans.

P.O.L. November 16, 2009 at 10:24 pm

I agree that applying laches seems wrong. As a practical matter, it would seem any person who just turned 18 could challenge the mark, so why force a new plaintiff to bring suit rather than just deciding the question on the merits. Although the government doesn’t have to afford trademark protection to any mark, it does seem suspect to me whether the decision not to afford the same protection to disparaging marks as to non-disparaging marks would pass constitutional muster. Can the government give special protection to speech it deems acceptable while denying that same protection to speech it disapproves of? It feels like impermissible viewpoint discrimination to me, but I think it would be an interesting issue for the Court to take up. Maybe a better plaintiff will come forward and we’ll get an answer.

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