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01/26/2016 03:23 pm ET Updated Jan 26, 2017

What The Trademark Ruling On The Washington Redskins Means For Business

What does the D.C. federal court's trademark law ruling on the Washington Redskins' name mean for business in general? originally appeared on Quora - the knowledge sharing network where compelling questions are answered by people with unique insights.

Answer by Alex Butterman, trademark attorney with Staas & Halsey LLP, on Quora.

Answer from Alex Butterman, trademark attorney with Staas & Halsey LLP.

"What does the D.C. federal court's trademark law ruling on the Washington Redskins' name mean for business in general?" is a good question because I am sure this is too complex for the media to be reporting correctly. I should mention that I have not yet read the opinion but I know the law and the issues.

First, today's ruling was not directly concerning the Washington Redskin's name. However, it concerns the same particular rule or portion of the federal trademark statute as applied to another case. The rule is a portion of Section 2(a) of the Lanham Act, our federal statute enacted in 1945 that governs trademark and unfair competition law. Section 2 of that act provides a handful of reasons why the U.S. Patent and Trademark Office (USPTO) can refuse to register a mark, one of which in Subsection (a) is if the mark is considered disparaging, offensive or scandalous.This particular decision actually only involves the disparagement prohibition.

Today's case decided the rehearing of an appeal by a musical band of Asian men called "The Slants" who wanted to register that name but the USPTO said evidence shows that "slants" is a derogatory name for Asians (I think the connotation is obvious). In the Redskins case, the USPTO said that a group of American Indians successfully showed that "redskin" is a derogatory name for American Indians. After the Federal Circuit court originally upheld the refusal to register THE SLANTS because it said it had to based upon precedent, one judge on this appellate court decided to suggest that maybe that precedent should be questioned because this rule could violate the First Amendment's free speech rights. I believe it was this same court that handled the only previous challenge to this same rule in the early 1980's and at that time said that free speech rights are not violated by this rule because this rule only prevents the federal registration of a mark, not the use of the mark.
Apparently, the judges on this Federal Circuit Court are attributing more importance to the value of a federal registration such that denying a federal registration does adversely affect free speech rights; and this court is not viewing trademark rights as mere commercial speech and/or that the government's interest in refusing to register disparaging marks is sufficiently compelling. Thus, the court contends that it is not Constitutional for the USPTO to refuse to register marks even if the mark can offend or disparage a segment of the public. The corollary of this, which is rather controversial, is that people should have the right under the First Amendment to a federal registration of any mark that they chose, even if the mark is hateful, disgusting, derogatory, etc. and the right only extends to the use of the mark to sell a product or service.

That's a lot of background info and a long explanation when the answer to your question is really that this should have minimal to no effect on "business in general." How many "businesses in general" are in the business of using a disparaging, offensive or scandalous name for their products/services?m Because that is really the only businesses affected by this. Maybe this will have the most impact on porn and entertainment industry businesses which tend to get some value out of controversial marks. And maybe this will enable more businesses to adopt racial names and slurs for their products/services but who in today's society will patronize such businesses? Assuming this law is upheld, this might enable the Redskins to keep the federal registrations for their name but it won't change the public's opinion of that name nor the impact of that name on American Indians and any segment of the public that sympathizes with them.

It should be kept in mind that while this decision is from one of a dozen federal appellate courts in the U.S. and the one court that happens to control the law that the USPTO must apply when registering marks, this decision will most likely be reviewed by the Supreme Court since it declares a section of a federal statute to be Unconstitutional. Also, Congress may very well have a say in this rule, especially with some Congressmen having already attempted to legislate that REDSKINS should be considered derogatory and not allowed to be registered. Congress directly makes federal law, including law that specifically overturns a court's decision interpreting that law.

The bigger question that all of this begs and needs to be decided is when or if our freedom of speech should be limited in order to protect people against hate speech, disparagement, offensive and lewd speech, etc., especially if the purpose of the speech is merely to sell a product or service as it is in this case, and especially if the government is asked to sanction the speech as the USPTO contends it is for a federal registration. All of our Bill of Rights are limited to some extent, including the First Amendment. I think people accept limitations on their First Amendment rights when it prevents someone from falsely yelling "fire!" in a crowded movie theater; when it prohibits publishing instructions on how to build a bomb; and when a business is prohibited from misleadingly expressing the virtues of its product to rip people off. So should First Amendment free speech rights end when a business uses vulgar or offensive symbols to identify itself to sell its products/services and then asks the government for additional legal protection to use that offensive/vulgar symbol?*

*The opinions expressed are those of the author and do not necessarily reflect the views of his firm, Quora or of other attorneys.This answer is not a substitute for professional legal advice. This answer does not create an attorney-client relationship, nor is it a solicitation to offer legal advice. If you ignore this warning and convey confidential information in a private message or comment, there is no duty to keep that information confidential or forego representation adverse to your interests. Seek the advice of a licensed attorney in the appropriate jurisdiction before taking any action that may affect your rights. If you believe you have a claim against someone, consult an attorney immediately, otherwise there is a risk that the time allotted to bring your claim may expire. Quora users who provide responses to legal questions are intended third party beneficiaries with certain rights under Quora's Terms of Service (http://www.quora.com/about/tos). Alex Butterman is a trademark attorney with Staas & Halsey LLP (Staas and Halsey LLP - Intellectual Property Law Firm), a Washington, D.C. IP boutique law firm. Alex is admitted to the bars of Washington, D.C., New York and New Jersey but, unless otherwise specified, the answer is intended to be general enough to apply to any U.S. state and based primarily upon his knowledge and experience with applicable federal laws.

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