Lanham Act

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The U.S. Olympic Committee, like many other major sports organizations, does not shy away from enforcing its trademarks. In addition to enforcing use of the words “Olympic,” “Olympics,” and “Olympiad” and any use of the interlocking rings logo, the Olympic Committee also enforces the use of names and years in the particular convention used by the Olympics (e.g. “Sochi2014” or “Rio2016”).  For example, last year the Olympic Committee sued an individual who had registered 177 websites using the Olympic Committee’s naming convention.  In addition, the Olympic Committee aggressively pursues users of its naming convention and other trademarks as hashtags on social media websites (such as #Rio2016 and #TeamUSA).  This year, a Minnesota company who sought to post about the 2016 Olympics on social media pages filed a declaratory judgment against the Olympic Committee in an attempt to assert its right to do so.  That suit has not been resolved and has instead been plagued by a recent procedural dispute.

Although the Olympic Committee may not always be successful in all of its trademark enforcement efforts, the Olympic Committee shows no sign of letting up. One reason may be that the Olympic Committee has more trademark protection under the Lanham Act than other organizations.  In fact, under the Olympic and Amateur Sports Act of 1978, the Olympic Committee has the exclusive right to use some of its trademarks even where another’s use does not result in a likelihood of customer confusion. This is different than other enforcers of trademarks, who are required to show that another’s use of a trademark (or variation thereof) results in a likelihood of confusion.  Since the Olympic Committee is not required to jump over that particular hurdle, it arguably has a unique ability to enforce certain of its trademarks.

Trademark infringement disputes are not limited to those between for-profit companies.  Indeed, charities also own trademarks and they can and do enforce their trademarks against other organizations (charitable or not) through cease and desist letters, lawsuits, etc.

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Case in point:  Last week, Mothers Against Drunk Driving (“MADD”), a non-profit founded in 1980, sued the founders of a relatively new charity, Mothers Of Drunk Drivers (“MODD”), for trademark infringement and dilution of MADD’s trademarks and service marks.  MADD’s complaint, filed in the District of South Carolina, claims that MODD’s use of the marks MOTHERS OF DRUNK DRIVERS and MODD is confusingly similar to MADD’s federally-registered MOTHERS AGAINST DRUNK DRIVING and MADD marks and that the MADD and MOTHERS AGAINST DRUNK DRIVING marks are famous in South Carolina and throughout the United States.  Among other claims, MADD’s complaint also asserts a cybersquatting claim based upon MODD’s use of the domain name mothersofdrunkdrivers.org.

MADD claims that MODD’s actions have injured MADD’s fundraising efforts and goodwill and that any money MODD’s founders have raised due to their use of confusingly similar marks is money that could have gone to MADD to support MADD’s mission.  MODD’s gofundme.com page, attached as an exhibit to MADD’s complaint and available online, indicates that MODD has raised $555 in 5 months.  In terms of damages, MADD seeks to recover all revenues and charitable contributions raised by MODD’s founders as a result of their claimed unlawful conduct.  In addition to damages, MADD seeks an order enjoining MODD’s founders from using the MOTHERS OF DRUNK DRIVERS and MODD marks, requiring the destruction of any marketing materials containing such marks, and ordering the cancellation or transfer of the mothersofdrunkdrivers.org domain name.

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This morning, the United States Supreme Court granted certiorari to hear the trademark dispute involving the rock band, The Slants.  The United States Patent and Trademark Office (“USPTO”) previously denied The Slants’ trademark registration on the basis of section 2(a) of the Lanham Act, which prohibits the registration of disparaging trademarks.  In 2015, the Federal Circuit held that section 2(a) is itself an unconstitutional restriction on the right to free speech guaranteed by the First Amendment.  The USPTO appealed that decision to the Supreme Court earlier this year, and the Supreme Court announced today that it will hear the case, thus signaling that it will determine whether or not the Lanham Act’s prohibition on offensive trademarks is constitutional.

An earlier blog post described the related dispute over whether the Washington Redskins will lose their federally-registered trademarks in the Redskins name.  The Supreme Court has not indicated whether it will also hear the Redskins’ dispute, which is currently pending before the Fourth Circuit.  However, the Supreme Court’s decision regarding The Slants will very likely impact the Redskins’ dispute as well as the USPTO’s registration of other potentially disparaging trademarks.

There has been much debate and discussion over whether the Redskins—Washington D.C.’s professional football team in the National Football League—should voluntarily change their name under the view that it disparages Native Americans.  In May, the Washington Post reported that a poll of Native Americans across the country found that nine in ten Native Americans are not offended by the Redskins name.

American football
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Regardless of what any poll may or may not suggest, there is also a separate debate on this issue—whether the Redskins should lose their federally-registered trademarks in the Redskins name.  The basis for this debate is section 2(a) of the Lanham Act, which bars registration of disparaging words or phrases.  And central to the debate is the First Amendment’s guarantee of the right to free speech.

In 2015, when a federal district court affirmed the United States Patent and Trademark Office (“USPTO”) cancellation of a number of the Redskins trademarks, it seemed almost certain that the Redskins would lose their trademarks.  But then the Federal Circuit ruled in a separate matter—related to the rock band the Slants—that section 2(a) is itself an unconstitutional restriction on the right to free speech.

The decision related to the Slants was appealed to the United States Supreme Court, and now the question of whether section 2(a) can prohibit the Redskins trademarks may be headed to the same place.  Initially, the Redskins filed an appeal of the cancellation of their trademarks to the Fourth Circuit Court of Appeals.  But in April, shortly after the Slants case was appealed to the Supreme Court, the Redskins filed a petition asking the Supreme Court to hear the case before the Fourth Circuit issues a decision in light of the fact that the Supreme Court may hear the issue in the case involving the Slants. Although the Redskins team apparently believes that both cases should be decided by the same court, particularly given the sums of money it has spent building the Redskins brand, the government disagrees that the Supreme Court should hear the case.  According to the New York Times, the Supreme Court only occasionally allows such a “certiorari before judgment.”

The outcomes of this case and the Slants case, whether ultimately decided by the Supreme Court, may have a significant impact on the ability to register disparaging or offensive trademarks in the future.  If section 2(a) is found by the Supreme Court to be unconstitutional, the USPTO would likely begin registering trademarks widely considered offensive or disparaging.