In the recent case of Belmora v. Bayer, the Fourth Circuit found that standing for §43(a) claim did not have to be premised on United States trademark registration (or even use of the mark in the United States). Instead, the court determined, one only needed to show that there is “a reasonable basis to conclude that the claimant is likely to be damaged by the defendant’s activities in the United States. In making this finding, the Fourth Circuit took note of the absence of language including a registration or use precondition in §43(a), whereas §32 covering trademark infringement includes such a precondition.
The Department of Justice (DOJ) declared that its argument against the Washington Redskins in a separate trademark dispute received a big boost from this decision, in particular the argument that the Redskins will not lose that much from their trademark being cancelled due to its disparaging nature. Belmora v. Bayer reinforces this argument by showing that even plaintiffs without protectable trademarks still have the avenue of pleading unfair competition claims under the Trademark Act available to them, allowing them to obtain relief against commercial actors who misrepresent the source of their goods or services through use of the plaintiff’s mark.
This shot in the arm for the government’s argument is particularly important considering its timing, coming just months after the Federal Circuit ruled that §2(a) of the Trademark Act (allowing cancellation of disparaging marks) was unconstitutional in that it violated the First Amendment right to free speech through impermissible viewpoint discrimination.
The Redskins pushed back against the government’s claim that the Fourth Circuit had bolstered its argument, asserting that §2(a) violates the First Amendment regardless of any §43(a) protections for disparaging marks. In doing so, the organization called it “ironic at best” that the government would attempt to emphasize ways in which the Trademark Act offers protection for disparaging marks while at the same time stressing the interest of Congress in withholding trademark protection for those same marks.
One way or another, it appears that the Supreme Court is going to have to weigh in on §2(a)’s constitutionality. If the Fourth Circuit holds it is constitutional, there will be a circuit split, and if it holds it unconstitutional, an appeal will almost certainly be soon to follow its decision.