Global Freedom of Expression

Pro-Football Inc. v. Blackhorse

On Appeal Mixed Outcome

Key Details

  • Mode of Expression
    Non-verbal Expression
  • Date of Decision
    July 8, 2015
  • Outcome
    Affirmed Lower Court
  • Case Number
    112 F.Supp.3d 439
  • Region & Country
    United States, North America
  • Judicial Body
    Appellate Court
  • Type of Law
    Administrative Law, Civil Law
  • Themes
    Commercial Speech

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Case Analysis

Case Summary and Outcome

A group of five Native Americans sought to have the Washington Redskins’ trademark registration cancelled. The court held that Redskins’ long-used trademark can be cancelled despite the Redskins’ objections and past use of the trademark. However, the trademark can be cancelled only because the term “redskin” “may disparage” Native Americans.


In 1933, the National Football League (“NFL”) “Washington Redskins” used the mark “Redskins” after the team’s owner at the time, George Preston Marshall, selected the name. The team name, which was used to distinguish the team from the Boston Braves baseball team, has been used ever since. Over the years, the Redskins Marks have been a source of controversy.

Five Native Americas, Amanda Blackhorse, Marcus Briggs-Cloud, Phillip Gover, Jillian Pappan, and Courtney Tsotigh (“Blackhorse defendants”), brought a case against Pro-Football, Inc. (“PFI”) under §14 of the Trademark Act of 1946. The Blackhorse defendants wanted to cancel six of the plaintiff’s trademark registration of the Washington Redskins, which were issued in 1967, 1974, 1978, and 1990. The trademark involves the term “REDSKINS” for services relating to professional football. In June 2014, the Trademark Trial and Appeal Board ordered that the Redskin Marks registrations be cancelled, as they violate the Lanham Act.

After the Board’s decision, the plaintiffs brought a case in federal court. The defendants claim that the trademark registration violated 15 U.S.C. §1052(a) (Lanham Act), which forbids registration for trademarks that may be disparaging to persons or bring people into disrepute or contempt. The defendants claim that PFI’s trademarks may disparage Native Americans at the time they were registered and that laches will not bar the defendant’s claims. The court is now reviewing two sets of summary judgment cross-motions.

Decision Overview

One issue before the court is “whether the Court should grant PFI’s Motion for Summary Judgment on Constitutional Claims and deny the cross-motion for summary judgment filed by Blackhorse Defendants and the United States of America.” [p. 2] PFI argues that the Lanham Act’s restriction on speech and burden on trademark holders violates the First Amendment. PFI also argues that the Lanham Act’s language of “may disparage” is unconstitutionally vague and allows for discriminatory and arbitrary implementation. Finally, PFI argues that the act overall burdens trademark holders’ speech.

After considering multiple precedents, the court denied PFI’s summary judgment motion and granted the U.S.’s and Blackhorse defendants’ summary judgment cross-motion. The court did so because the Lanham Act does not involve the First Amendment. The court also held that the federal trademark involves government speech, rather than commercial speech. Thus, federal trademarks are exempt from scrutiny under the First Amendment, as “government speech is exempt from First Amendment scrutiny.” [p. 29]

The court also granted the Blackhorse Defendants’ summary judgment cross-motion and denied the PFI’s summary judgment motion on constitutional grounds. The court found that the Lanham Act is not invalid because of vagueness for various readings, including that the Act gives fair warning of what actions qualify as disparaging and are prohibited, and, thus, does not allow for discriminatory and arbitrary enforcement.

The court denied PFI’s summary judgment cross-motion on the “may disparage claims,” and granted the Blackhorse defendants’ summary judgment motion. The court has the discretion to deny registration for trademarks it finds to be disparaging. To make this decision the court relies on dictionary entries and media, scholarly, and literary references. The court also takes into consideration the statements by individuals who belong to groups that may be disparaged by the Redskins Marks during the pertinent time period. “Accordingly, the Court finds that the record evidence of statements from Native American leaders and groups weigh in favor of finding that between 1967 and 1990, the Redskins Marks consisted of matter that ‘may disparage’ a substantial composite of Native Americans.” [p. 61]

Decision Direction

Quick Info

Decision Direction indicates whether the decision expands or contracts expression based on an analysis of the case.

Mixed Outcome

The court held that Redskins’ long-used trademark can be cancelled despite the Redskins’ objections and past use of the trademark. However, the trademark can be cancelled only because the term “redskin” “may disparage” Native Americans.

Global Perspective

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Global Perspective demonstrates how the court’s decision was influenced by standards from one or many regions.

Table of Authorities

National standards, law or jurisprudence

  • U.S., Walker v. Sons of Confederate Veterans, Inc., 135 S.Ct. 2239 (2015)
  • U.S., Rust v. Sullivan, 500 U.S. 173 (1991)
  • U.S., Sorrell v. IMS Health Inc.,131 S.Ct. 2653 (2011)
  • U.S., Snyder v. Phelps, 562 U.S. 443 (2011)
  • U.S., Simon & Schuster, Inc. v. N.Y. State Crime Victims Bd., 502 U.S. 105 (1991)
  • U.S., New York Times Co. v. Sullivan, 376 U.S. 254 (1964)
  • U.S., Cincinnati v. Discovery Network, Inc., 507 U.S. 410 (1993)
  • U.S., Pleasant Grove City v. Summum, 555 U.S. 460 (2009)
  • U.S., Bd. of Regents of Univ. of Wis. System v. Southworth, 529 U.S. 217 (2000)
  • U.S., Johanns v. Livestock Marketing Assn., 544 U.S. 550 (2005)
  • U.S., United States v. Williams, 553 U.S. 285 (2008)
  • U.S., Grayned v. City of Rockford, 408 U.S. 104 (1972)
  • U.S., Hill v. Colorado, 530 U.S. 703 (2000)
  • U.S., Ward v. Rock Against Racism, 491 U.S. 781 (1989)
  • U.S., Marsh v. Chambers, 463 U.S. 783, 103 S. Ct. 3330, 77 L. Ed. 2d 1019 (1983).
  • U.S., Town of Greece v. Galloway, 134 S. Ct. 1811 (2014)
  • U.S., Am. Freedom Def. Initiative v. Se. Pa. Transp. Auth., No. 2:14-cv-5335 (E.D. Pa. Mar. 11, 2015)
  • U.S., 15 U.S.C. § 1064(c)
  • U.S., Pro-Football, Inc. v. Harjo, 565 F.3d 880 (D.C. Circuit 2009)
  • U.S., B & B Hardware, Inc. v. Hargis Indus., 135 S. Ct. 1293 (2015)
  • U.S., 15 U.S.C. § 1057
  • U.S., In re McGinley, 600 F.2d 481 (C.C.P.A. 1981)
  • U.S., Test Masters Educ. Servs. V. Singh, 428 F.3d 559 (5th Cir. 2005)
  • U.S., In re Fox, 702 F.3d 633 (Fed. Cir. 2012)
  • U.S., In re Boulevard, 334 F.3d 1336 (Fed. Cir. 2003)
  • U.S., Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999)
  • U.S., In re Mavety Media Grp., 33 F.3d 1367 (Fed. Cir. 1994)
  • U.S., Clatterbuck v. City of Charlottsville, 708 F.3d 549 (4th Cir. 2013)
  • U.S., Leathers v. Medlock, 499 U.S. 439 (1991)
  • U.S., Thornhill v. Alabama, 310 U.S. 88 (1940)
  • U.S., Petition of Variable for Change of Name v. Nash, 144 N.M. 633 (N.M. Ct. App. 2008)
  • U.S., Lee v. Superior Court, 9 Cal. App. 4th 510 (Cal. 1992)
  • U.S., In re Bacharach, 344 N.J. Super. 126 (2001)
  • U.S., Harris v. Quinn, 134 S.Ct. 2618 (2014)
  • U.S., 15 U.S.C. §1127
  • U.S., 15 U.S.C. §1052
  • U.S., Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960 (Fed. Cir. 2015)
  • U.S., In re Trivita, Inc. 783 F.3d 872 (Fed. Cir. 2015)
  • U.S., In re Geller, 751 F.3d 1355 (Fed. Cir. 2014)
  • U.S., Muir v. Ala. Educ. Television Comm’n, 688 F.2d 1033 (5th Cir. 1982)
  • U.S., In SCV, 288 F.3d 610 (4th Cir. 2002)
  • U.S., Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985)
  • U.S., ACLU v. Tata, 742 F.3d 563 (4th Cir. 2014)
  • U.S., Berger v. ACLU of N.C., No. 14-35, 2015 WL 2473457 (U.S. June 29, 2015)
  • U.S., Planned Parenthood of S.C. Inc., v. Rose, 361 F.3d 786, 789-93 (4th Cir. 2004)
  • U.S., Knights of the KKK v. Curators of the Univ. of Mo., 203 F.3d 1085 (8th Cir. 2000)
  • U.S., Wells v. City & Cnty. Of Denver, 257 F.3d 1132 (10th Cir. 2001)
  • U.S., 15 U.S.C. § 1051
  • U.S., Regan v. Taxation with Representation of Wash., 461 U.S. 540 (1983)
  • U.S., Harris v. McRae, 448 U.S. 297 (1980)
  • U.S., Legal Servs. Corp. v. Velazquez, 531 U.S. 533 (2001)
  • U.S., Agency for Int’l Dev. v. Alliance for Open Soc’y Int’l. Inc., 133 S. Ct. 2321 (2013)
  • U.S., Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214 (4th Cir. 2002)
  • U.S., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992)
  • U.S., Vill. of Hoffman Estates v. Flipside, Hoffman Estates, Inc., 455 U.S. 489 (1982)
  • U.S., Wag More Dogs, LLC v. Cozart, 680 F.3d 359 (4th Cir. 2012)
  • U.S., Kolender v. Lawson, 461 U.S. 352 (1983)
  • U.S., In re Heeb Media, LLC, 89 U.S.P.Q.2d 1071, 2008 WL 5065114 (T.T.A.B. 2008)
  • U.S., In re Loew’s Theatres, Inc., 769 F.2d 764 (Fed. Cir. 1985)
  • U.S., In re Lebanese Arak Corp., 94 U.S.P.Q.2d 1215, 2010 WL 766488 (T.T.A.B. 2010)
  • U.S., In re Squaw Valley Dev. Co., 80 U.S.P.Q.2d 1264, 2006 WL 1546500 (T.T.A.B. 2006)
  • U.S., In re Tinseltown, Inc., 212 U.S.P.Q. 863, 1981 WL 40474 (T.T.A.B. 1981)
  • U.S., Kennedy v. Mendoza-Martinez, 372 U.S. 144 (1963)
  • U.S., Gaines v. Herman, 65 U.S. 553 (1860)
  • U.S., Moore v. Am. Transp. Co., 65 U.S. 1 (1860)

Case Significance

Quick Info

Case significance refers to how influential the case is and how its significance changes over time.

This case did not set a binding or persuasive precedent either within or outside its jurisdiction. The significance of this case is undetermined at this point in time.

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