Last week, counsel for the Washington Redskins submitted a lengthy brief to the Fourth Circuit that, in part, provided a laundry list of other trademarks that have been registered by the USPTO and were implicitly deemed not to be immoral, scandalous, disparaging or otherwise offensive.  In a parallel but unrelated matter, the owners of the trademark for NUT SACK DOUBLE BROWN ALE – for a beer flavor, naturally – overcame a challenge to their mark and were granted a federal trademark registration.

These two decisions seem incongruous, but are they really?  At the very least, I hope to see an episode of South Park where Cartman wears a Washington Redskins™ jersey while drinking a Nut Sack®-flavored drink.

First and foremost, I would be remiss in not reminding the reading audience that “Washington Redskins” is still a valid and enforceable trademark.  The organization currently maintains common law rights in the mark and almost certainly will seek to enforce them should you try to use the famous mark without permission or license.  The legal fight is whether or not the Redskins™ mark should be afforded the presumptions that are acquired by having a federal registration through the USPTO.

Section 2(a) of the Lanham Act precludes the registration of any mark that:

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…[1]

 Accordingly, the USPTO instructs examining attorneys to prohibit the registration of marks that meet the exceptions set forth by Section 2(a).[2]  The Washington Redskins have pursued the argument that there is a litany of other marks that are potentially immoral or scandalous but which nevertheless have been registered.  As set forth in the Redskins’ brief, the following are registered trademarks that may be potentially offensive to others:

TAKE YO PANTIES OFF clothing; DANGEROUS NEGRO shirts; SLUTSSEEKER dating services; DAGO SWAGG clothing; DUMB BLONDE beer; TWATTY GIRL cartoons; BAKED BY A NEGRO bakery goods; BIG TITTY BLEND coffee; RETARDIPEDIA website; MIDGET-MAN condoms and inflatable sex dolls; and JIZZ underwear. These are not isolated instances. The government routinely registers pornographers’ marks: TEENSDOPORN.COM, MILFSDOPORN.COM, THUG PORN, GHETTO BOOTY, and BOUND GANGBANGS are but a few.[3]

Counsel for the Washington Redskins contend that the ban on “disparaging” trademarks is an unconstitutional burden on free speech and analogized it to banning copyrights for “disparaging” books and works of art.[4]  Yet on October 29, 2015, the appeal to deny registration for NUT SACK DOUBLE BROWN ALE was rejected, effectively granting registration for a mark that would likely have found its way into the Redskins’ legal briefing if it were made public a week earlier.

But why is there a distinction, if any?  In my opinion, the Washington Redskins’ legal arguments are a publicity-seeking red herring that has minimal legal merit.  In short, just because the mark for MIDGET-MAN® may conceivably be disparaging or offensive does not necessitate that the Redskins™ mark also be allowed in.  Even assuming that the claims made by the Redskins’ counsel are entirely accurate and that these marks are immoral, that should have no bearing on the registrability of “Washington Redskins” by itself.  It could only serve to initiate an appeal to cancel the registrations for these other marks, not the reverse.  It serves no direct benefit to the potential registration for Washington Redskins™.

Moreover, the Redskins legal fight exists because way back in 1992, the Navajo tribe filed a petition to cancel the registration.  To my knowledge, no third party has made any efforts to cancel the registration for DAGO SWAGG®, no matter how offensive it may be to a class of people.  The Trademark Trial and Appeal Board merely responded to the original Petition to Cancel by the Navajo tribe and that is how the Fourth Circuit is now tasked with addressing the legal merits of the order for cancellation issued by the United States District Court for the Eastern District of Virginia back in July.[5]  Someone with standing would need to independently petition to cancel the mark for DUMB BLONDE® beer, however unlikely it would be that someone would feel compelled to pay the legal fees necessary to protect the reputation of blonde individuals everywhere.

As for NUT SACK DOUBLE BROWN ALE®, I am not usually a fan of novelty beer flavors, so it is more like that the inevitable hangover from it would be more offensive to me than the name.  Either way, I do not expect anyone else to appeal the morality of NUT SACK.  Or, maybe it is best explained through the immortal words of Turd Ferguson… yeah, it’s a funny name.

 

[1] 15 U.S.C. § 1052(a), “Lanham Act Section 2(a).”

[2] See TMEP 1203.01.

[3] http://pdfserver.amlaw.com/nlj/Pro-Football%20opening%20brief.pdf

[4] Id.

[5] Pro-Football, Inc. v. Blackhorse, No. 1:14-cv-01043-GBL-IDD, 2015 U.S. Dist. LEXIS 90091 (E.D. Va. July 8, 2015).