This week saw developments in the two cases challenging the application of Section 2(a) of the Lanham Act to their registration: In re Tam and Blackhorse v. Pro Football, Inc.
In re Tam
We have discussed In re Tam in prior posts. In December 2015, the en banc Federal Circuit struck down Section 2(a) of the Lanham Act, which prohibits the registration of marks that may disparage persons, institutions, beliefs, or national symbols. The Court held that the provision was facially unconstitutional under the First Amendment because it was a viewpoint-based restriction on speech. The court applied heightened scrutiny, but also held that the provision would fail under the commercial speech intermediate scrutiny standard because there was no substantial government interest justifying the ban on disparaging marks.
Last week, the government filed a petition for a writ of certiorari to the Supreme Court, urging the reversal of the decision of the Federal Circuit. The government argues that the statute does not prohibit speech, or restrict the use of any trademark; rather, it confers benefits on terms that are consistent with legislative policy.
This was not surprising. The holding that Section 2(a) was facially unconstitutional meant that the PTO would not be able to continue to apply the law to refuse registration. There would need to be a final resolution to allow the PTO to continue to process registration applications.
Blackhorse v. Pro-Football
What was more surprising was the move by Pro-Football, Inc. (the holder of the Washington Redskins trademarks) to file a petition for certiorari in Amanda Blackhorse v. Pro-Football, Inc. This case is still pending before the Fourth Circuit, and there has been no decision by that court yet. There is no requirement of a prior appellate judgment, however, for the Supreme Court to have jurisdiction. While proceeding directly to the Supreme Court is theoretically allowable, requesting Supreme Court review before having an appellate judgment just does not happen very often. As a football fan, it reminded me of when Bill Belicheck figured out how to exploit the tackle eligible rule to fool the Ravens (and the referees) a few years back, but I digress.
One reason why certiorari normally isn’t sought before an appellate judgment is the odds of a grant are already slight and there must be extraordinary circumstances to warrant a litigant short circuiting the appellate review process and going straight to the Supreme Court. Pro-Football claims that those circumstances are present here, because the issues in its case and that of Tam are complementary and should be decided together, and because Pro-Football has raised other constitutional issues in its case that should be addressed alongside the issues raised in Tam.
The Pro-Football v. Blackhorse case does raise a number of issues that were not raised in Tam nor decided by the en banc Federal Circuit. Pro-Football argues that Section 2(a) is impermissibly vague and is arbitrarily enforced, violating due process. This argument was not developed in the Tam case. Pro-Football also argues that the retroactive cancellation of an important property right without notice violates due process. Notice was not an issue in Tam. The administrative posture is also different between the two cases, with Tam being a refused registration and Pro-Football having its previously allowed trademark registration cancelled after many years.
The Supreme Court could take up the certiorari petitions in June. Stay tuned.