Finguerra-DuCharme and Law360 Discuss 2016’s Must-Watch Trademark Cases
Dyan Finguerra-DuCharme, a partner in Pryor Cashman’s Intellectual Property and Litigation Groups, shared her predictions for several highly anticipated trademark cases in the recent Law360 article, “Trademark Cases to Watch In the 2nd Half of 2016.”
Assessing the Constitutionality of Section 2a of the Lanham Act: the Redskins and The Slants Cases
Addressing the years of litigation and conflicting court rulings resulting from Pro-Football Inc. v. Blackhorse et. al. and Lee v. Tam, Finguerra-DuCharme explained, “this has been going on for years. I think people really want finality on this.”
These cases, both pending before the Supreme Court, concern the constitutionality of Section 2a of the Lanham Act; specifically, whether it violates the First Amendment. A decades-old rule, Section 2a became hotly contested after it was invoked by the U.S. Patent and Trademark Office to rescind the registration of the “Washington Redskins” - a name many deemed an offensive ethnic slur against Native Americans (in Pro-Football) - and to refuse registration of the name “The Slants” to an Oregon rock band on the grounds that it was offensive to people of Asian descent (in Lee).
While the Federal Circuit held in Lee that Section 2a violates the First Amendment by restraining speech, the lower court in Pro-Football upheld the constitutionality of the rule, prompting the Redskins to appeal to the Fourth Circuit. What followed next was an unusual procedural move: the Redskins filed a rare prejudgment petition seeking to take their appeal directly to the Supreme Court before the Fourth Circuit issues its ruling.
“The approach that the team took fundamentally makes sense,“ Finguerra-DuCharme stated, “but I would presume that the court is not going to want to set a precedent that you can just circumvent a circuit court.” She went on to project that the Supreme Court will most likely deny cert. in Lee and wait to see what the Fourth Circuit decides in Pro-Football.
If the Fourth Circuit upholds the lower court’s decision, a circuit split would emerge, making the issue ripe for review. The Supreme Court will decide in September whether or not to grant certiorari.
To read the July 13, 2016 Law360 article in its entirely, please click here.
More About Dyan Finguerra-DuCharme
Finguerra-DuCharme frequently advises on trademark availability within the U.S. and litigates trademark cases globally and before the Trademark Trial and Appeals Board. To learn more about her practice and experience, please visit here.
