In light of the Supreme Court’s opinion in Matal v. Tam, a group of Native Americans agreed to drop their litigation against the Washington Redskins football team, ending a dispute that has lasted more than two decades.
The case began in 1992 when a group of Native Americans brought a cancellation proceeding before the Trademark Trial and Appeal Board (TTAB), arguing that six registrations for the professional football team were obtained contrary to Section 2(a) of the Lanham Act, which provides that no trademark shall be refused registration on account of its nature unless it “[c]onsists of … matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
The TTAB agreed that the mark disparaged Native Americans, and ordered the registrations canceled. But the case underwent several years of appeals, bouncing between federal district and appellate courts until it returned to the TTAB in 2014. Rejecting the Redskins’ laches defense and reviewing the entire record, the board noted that dictionary definitions began identifying “redskin” as an offensive term in 1966 and that general use of the term has dropped off since that time.
Concluding that “at a minimum” 30 percent of Native Americans found the term disparaging, the board said this amount was “more than substantial,” and again canceled the registrations.
The NFL team appealed, but the case was put on hold in the U.S. Court of Appeals, Fourth Circuit, pending Tam.
In that case, an Asian-American band dubbed “The Slants” sought to register the name for trademark protection. When registration was denied based on Section 2(a), the band sued, arguing that the provision violated their First Amendment rights. The en banc Federal Circuit agreed and struck down the rule on constitutional grounds. The U.S. Patent and Trademark Office (USPTO) appealed, and the nation’s highest court granted the agency’s writ of certiorari.
At oral argument, the justices expressed skepticism that the government has the authority to penalize speech with which it disagrees. And in a unanimous opinion, the Court struck down Section 2(a), with Justice Samuel Alito declaring that the provision “offends a bedrock First Amendment principle. Speech may not be banned on the ground that it expresses ideas that offend.”
While the provision was evenhanded in “viewpoint discrimination” and prohibited disparagement of all groups, it was nevertheless unconstitutional. “It applies equally to marks that damn Democrats and Republicans, capitalists and socialists, and those arrayed on both sides of every possible issue,” Justice Alito wrote. “It denies registration to any mark that is offensive to a substantial percentage of the members of any group. But in the sense relevant here, that is viewpoint discrimination: Giving offense is a viewpoint.”
The opinion cleared the way for The Slants to register their name—and for the Redskins to retain their trademark rights. Just two days after the Court published its opinion, the clerk of the court for the Fourth Circuit wrote to the parties, asking for their views on whether the need for oral argument remained in light of Tam.
In response, the Redskins told the court that because Section 2(a) was the USPTO’s sole basis for concluding their marks were not eligible for registration, “Tam thus mandates reversal of the district court’s judgment.” The NFL team requested that the court reverse the judgment, vacate the order to cancel the trademark registrations, and remand the case with instructions to grant summary judgment to the Redskins.
Putting an end to the long-running litigation, counsel for the Native Americans reached a similar conclusion. “We agree with Appellant that the Supreme Court’s decision in [Tam] is controlling,” the plaintiffs wrote. “As a result, there is no need for oral argument. In addition, we consent to the entry of an Order as described [by the Appellant].”
To read the Redskins’ response to the court, click here.
To read the plaintiffs’ response, click here.
Why it matters: The litigation may have officially come to a close, but the plaintiffs vowed to continue their fight against the use of the Redskins’ moniker by making efforts to persuade advertisers, politicians and fans to put pressure on the team to stop using the mark. “They feel that the litigation successfully accomplished their much more important objective of bringing to the public’s attention the issue of the team’s name and the use by sports teams of Indian names and imagery,” plaintiffs’ counsel said in a statement. “As a result of the litigation, the entire country has learned of Native American objections to the team’s name. The litigation led to national discussion of the appropriateness of the team’s name by the media and political leaders, including even President Obama, and, most importantly, by ordinary citizens from every walk of life.”
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