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Two recent Supreme Court cases abrogated § 2(a) of the Lanham Act, which prohibited the registration of trademarks that were disparaging, immoral, or scandalous. While the Supreme Court justified the death of § 2(a) on the grounds of free speech, it has also opened up a new problem for Native American communities. § 2(a) was the basis for challenging trademarks that used Native American names, images, and motifs, and removing this provision undercuts Native American claims to remove protection from these marks.
Tam and the Allowance of Disparaging Marks
In 2017, the Supreme Court made the monumental decision to allow disparaging trademarks. In Matal v. Tam, Simon Tam and his band, The Slants, tried to register their name with the U.S. Trademark Office. Their trademark application was denied because the mark was considered disparaging towards “persons of Asian descent.” The Lanham Act § 2(a) barred marks that were disparaging. This case was further complicated by the fact that Tam and his band were all of Asian descent. Ultimately, a unanimous 8-0 Supreme Court decided in Tam’s favor and held that the disparagement clause in the Lanham Act was unconstitutional under the First Amendment as it allowed discrimination against certain viewpoints.
The Tam decision focused on a battle between First Amendment free speech and the protection of racial groups from disparagement. The American Civil Liberties Union took the side of free speech. The Fred T. Korematsu Center for Law and Equality, the National Native American Bar Association, and other civil rights groups, on the other hand, came down strongly against racial discrimination, arguing that § 2(a)’s disparagement clause served a substantial interest. The latter groups’ fears proved justified.
While Tam and his band were sympathetic plaintiffs, the removal of the disparagement clause has opened the doors to trademarks that are used to denigrate racial groups. A particularly poignant example is the use of Native Americans as mascots in sports. The Native American Organizations filed an amicus curiae brief in Tam, citing the importance of § 2(a)’s disparagement clause for countering disparaging uses of Native Americans as sports teams’ names and mascots, such as the Redskins and Indians.
Prior to Tam, § 2(a)’s disparagement clause had been an invaluable tool for Native Americans and civil rights groups trying to remove derogatory sports logos. For example, in 2014’s Pro-Football, Inc. v. Blackhorse case, the Eastern District of Virginia ruled that the Washington Redskins’ mark was indeed disparaging against Native Americans. They found that the term “redskins” connoted “savageness,” “subhuman brutality,” and a racial epithet akin to the “N-word.”
However, this apparent victory turned to ash when Tam was decided. The Fourth Circuit vacated the decision and remanded it for further proceedings in line with the Supreme Court’s ruling in Tam. Unnerved by Tam, Blackhorse withdrew her claim against the Redskins.
Brunetti and the End of § 2(a)
After Tam, only the disparaging clause of § 2(a) was struck down. The United States Patent and Trademark Office continued to evaluate trademarks under the “immoral or scandalous” clause of § 2(a). It was argued that using the “immoral or scandalous” section of § 2(a) could be the way forward for striking down sports marks that disparage Native Americans. However, the Supreme Court struck down any chance of that in June 2019. In Iancu v. Brunetti, the Supreme Court approved the trademark “Fuct,” holding that, like the disparagement clause of § 2(a), the immoral or scandalous clause of § 2(a) was also unconstitutional under the First Amendment.
Even if there were still a § 2(a) basis for challenging sports marks that incorporate Native Americans, these marks would still exist under common law use and could still utilize § 43(a) for false endorsement suits. However, not allowing federal registration of these marks would have weakened them and helped to apply more pressure to ending such uses. Instead, Tam and Brunetti effectively granted an exclusive right to a word regardless of its effect on individuals, cultures, or people.
Looking to Non-Trademark Solutions
With the death of § 2(a), public pressure is perhaps the most likely tool to end the disparaging uses of Native American and tribal names by sports teams. Popular outcry against these uses has already made some inroads. The Cleveland Indians will retire Chief Wahoo in 2019–although it will continue to own the trademark and sell merchandise. Also, earlier this year, the State of Maine banned the use of Native American mascots in public schools.
The history of the use of Native Americans in sports team logos leaves little doubt that the uses are historically couched in blatant racism. Tam may have been a sympathetic client, but looking only to the facts of Tam ignores the far more dangerous uses of race in trademarks. With the option to block such marks under § 2(a) removed by the Supreme Court, it now falls to public discourse or legislative action to stop such disparaging uses of Native American names in sports teams’ logos and mascots.
*Michael Goodyear is a third-year law student at the University of Michigan Law School. He is also the editor-in-chief of the Michigan Technology Law Review and the president emeritus of both the Privacy and Technology Law Association and the Entertainment, Media, and Arts Law Students Association at the University of Michigan Law School.
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