Dan Snyder’s fight to keep his promise not to change the Redskins name and brand just got a lot harder as the U.S. government threw its hat into the mix. The Justice Department recently filed papers in a federal court in Alexandria, Virginia defending the Lanham Act, in response to the Redskins challenge over its constitutionality. This will force the already embattled brand to face off with the government itself regarding one of the key components of its most recent claim.
On June 2014, the U.S. Trademark Trial and Appeal Board (TTAB) upheld an earlier decision to revoke the registration of the Redskins trademark on a split 2-1 vote citing Section 2(a) of the Lanham Act. This section specifically states:
“No trade-mark 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 response, the Redskins filed an appeal in the form of a complaint in the U.S. District Court for the Eastern District of Virginia.
The complaint was filed under a procedural provision of the Leahy-Smith America Invents Act (AIA), which allowed the Redksins to ask for a court review of the records of the case in de novo, or in the new. Specifically, Sec. 18.(b)(2) which states:
REVIEW.—A party may take an immediate interlocutory appeal from a district court’s decision under paragraph (1). The United States Court of Appeals for the Federal Circuit shall review the district court’s decision to ensure consistent application of established precedent, and such review may be de novo.
This strategy allows another court to look at the case without considering the findings, conclusion, or assumptions made by another court or board. A de novo case also allows the Redskins to introduce new evidence to issues already decided by the Board, as well as raise new issues that can strengthen their case.
The most important new issues raised by the Redskins challenges Section 2(a) of the Lanham Act, saying that the provision is unconstitutional for four reasons.
Defending the Lanham Act
When the U.S. Justice Department filed its defense against the Redskins challenge of the Lanham Act, it was doing so to protect the constitutionality of the law. The government has no interest if the Redskins get to keep their name or not, however, the outcome of the Lanham challenge will play a key role in deciding that case as well. If the Redskins lose their argument that the Lanham Act in unconstitutional, that would throw half of their new arguments out the window and force them to depend on the Fifth Amendment.
It’s going to be an uphill battle for the Redskins in this regard since it can’t call upon the two strategies it used when its trademark first got cancelled in 1992 and got back in 2005. These strategies included The Laches doctrine and secondary meaning in Pro Football, Inc. v. Hajro.
The repeated complaints against the Redksins brand and name immediately disqualifies secondary meaning as it is clear that the terms in question have not acquired any. The Laches Doctrine also doesn’t apply because of the recent filing of the new case Blackhorse v. Pro-Football, Inc.