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I am going to admit my secret shame. I am a Washington Redskins fan. My father’s family hails from the District, and his grandfather had season tickets at one point. With the woeful lack of a LA football team (for now) the Skins were the only feasible fan option for me for pro football.

But I actually fit into an odd ‘Skins minority: I’d favor a name change for the team. Yes, it would be a shame to lose some franchise history — but not as much of a shame as rooting for a franchise with an odious name. As such, I was glad when a federal judge upheld the Federal Trial and Appeal Board’s 2-1 ruling that the team’s name is offensive to Native Americans, and, thus, ineligible for trademark protection under 15 USC §1052(a). That section of the Lanham Act states that offensive marks are not valid trademarks.

But then the U.S. Court of Appeals for the Federal Circuit (the special court dealing mostly with appeals from the patent office) recently struck down 2(a) as an unconstitutional violation of the First Amendment in the case In Re Simon Tam. Now my consternation applies not just to a football team and its name but also to the modernity, or lack of it, in trademark law.

Upending 70 years of precedent

Tam leads the all Asian-American band called “The Slants.” They were denied a trademark in their band name six years ago by the Trademark Office, and they have been fighting the ruling ever since.

The Federal Circuit  in December upended a 70-year-old statute by holding that this statute’s ban on “disparaging” trademarks is “viewpoint discrimination” deserving strict review.  In other words, the court said, it must pass the highest bar for the government to surmount or speech that is deserving of the highest levels of First Amendment protection.

But after considering this standard, isn’t it also reasonable to consider that a trademark must be used in commerce, so it also should be governed by rules about commercial speech? That’s an area with less First Amendment protection. The court anticipated this notion, however, and held that even using intermediate scrutiny, the statute does not stand up to the challenge.

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This decision has started to have an effect already because the Federal Circuit’s rulings hold sway over the U.S. Patent and Trademark Office (USPTO). The USPTO has said that because “disparaging” trademark registrations are prohibited, the rest of the section including “scandalous and immoral” marks must be invalid, as well.

In the aftermath of this ruling most major news outlets took the view that the Federal Circuit’s Slants ruling also strengthens the Skins argument for holding a valid trademark.

Skins victory still in doubt

But remember this about the team and its mark: Its pending trademark case resides in the U.S. Fourth Circuit Court of Appeals, not in the Federal Circuit; this new holding is not binding on the Fourth, and, thus, the Skins. Plus there now is a split among the appellate circuits, where one struck down a major part of a major statute. This is a path that leads to the U.S. Supreme Court.

Further, and not to be ignored are the actions of Change the Mascot, the Oneida Indians campaigning against the Redskins. These advocates also are pushing a bill in Congress to cancel the Skins’ mark; advocates already have scored legislative success in California.

Majority privilege in mark decisions?

Tam spoke with Indian Country Today Media Network and said he was “a long-time supporter of the Change the Name campaign.” He said he was upset that some quotes “attributed to [him were] inaccurate.” The interview is enlightening, as it gets into some interesting and case facts, underplayed in news reports and the judicial opinion.

The USPTO, he said, referred to and cited a long-standing depository of Internet nonsense, (site NSFW), as proof that the term slants was offensive. Tam also looked into other similar cases including HEEB magazine and Dykes on Bikes where the USPTO denied trademarks to groups who said they were seeking to re-appropriate racial slurs. They got letters from the Asian-American community, yet the USPTO rejected them again. Most worrying to him: a disparity in how this statute is applied. Courts, he said, rule against queer communities and people of color; Caucasians own the only mark on the slurs chink and jap while 800 other mark registrations have been granted for the term slant.

Of course the sword cuts both ways. Tam is now free to trademark his re-appropriating terms. Yet Skins owner Dan Snyder also has a new legal avenue to keep his offensive team name. Something’s rotten in mark law when communities that should be shielded by 2(a) are further disenfranchised while those who disparage them get legal protections.