On March 5, the American Civil Liberties Union (ACLU) filed an amici curiae brief in support of the Washington Redskins in its battle with the United States Patent and Trademark Office (USPTO) over the validity of the REDSKINS trademark.

In 2014, the USPTO determined that the term REDSKINS was offensive and derogatory and therefore violated the Lanham Act’s prohibition on derogatory trademarks of an “immoral,” “scandalous,” or “disparag[ing]” nature. Currently, the Washington Redskins are challenging this ruling before a federal district court in Alexandria, Va. (Case 1:14-cv-01043-GBL-IDD).

In its filing¹, the ACLU admitted that the term REDSKINS is offensive to certain groups and individuals, if not simply racist. Irrespective of this, the ACLU persuasively argues that “the question of whether certain speech is distasteful is entirely distinct from the question of whether the government can constitutionally disadvantage it for that reason. Under the First Amendment, viewpoint-based regulation of private speech is never acceptable, regardless of the controversy of the viewpoint.”

Accepting this proposition, the ACLU stated that by “scheduling the cancellation of the Redskins’ trademark because the word expresses a disparaging viewpoint, the government violated the First Amendment.” The ACLU went on to demand that the “Court should end this formal system of viewpoint discrimination by issuing a narrow ruling that strikes down those portions of Section 2(a) of the Lanham Act that prohibit registration of ‘immoral,’ ‘scandalous,’ or ‘disparag[ing]’ marks.”

The ACLU’s arguments provide a broader perspective on what may have previously been considered a straightforward administrative dispute. The USPTO has rejected the registration of derogatory marks for decades, and only rarely have appeals been taken after the USPTO has made such a determination. In the past, the Lanham Act’s prohibition of derogatory marks has survived constitutional scrutiny based on the premise that the denial of trademark rights for such marks does not restrict anyone from speaking or publishing the words or marks.

The ACLU rebuts this argument by citing cases supporting the proposition that the First Amendment prohibits government restriction of speech not only when it restricts the speech outright, but also when it creates a financial disincentive to engage in speech. The use of an unprotectable mark would cost the Washington Redskins millions in lost revenue, and the denial of trademark rights in the term REDSKINS would strongly financially disincentivise the organization’s continued use of that term.

The Washington Redskins and owner Daniel Snyder have considerable resources available to them, and they would potentially stand to lose significant revenue if their exclusive rights in the term REDSKINS were eliminated. Consequently, the torch lit by the ACLU will likely be eagerly carried by the Washington Redskins. The ACLU’s constitutional argument is a serious one, and with the entrenched backing of Mr. Snyder, this is a litigation that will be with us for some time. Taft’s Intellectual Property group will inform you of any updates as they unfold.

¹Available online here.