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On June 18, 2014, a divided panel of the U.S. Patent and
Trademark Office Trademark Trial and Appeal Board
("TTAB") ordered cancellation of six of the Washington
Redskins' trademark registrations holding that
"Redskins" was a disparaging term when those
registrations issued between 1967 and 1990. The registrations will
remain in force pending the football team's planned appeal.
As the TTAB majority made clear, the decision affects only the
right to register, but not the right to use the REDSKINS marks. The
Redskins have already announced that they will continue to use the
name. Even without registrations, the team owns "common
law" trademark rights and can still attempt to enforce its
rights through federal law under Section 43(a) of the Trademark
(Lanham) Act, so there is still a sufficient basis on which to make
an infringement claim. Nonetheless, if the registrations are
ultimately cancelled, certain of the team's future trademark
enforcement efforts could be hampered. While the immediate impact
of the decision is minimal, the 81-page decision in Blackhorse v. Pro-Football, Inc. is a
significant development in what has thus far been a 22 year
battle.
Section 2(a) of the U.S. Trademark Act prohibits registration of
marks that may disparage persons or bring them into contempt,
ridicule or disrepute. Relying on Pro-Football, Inc. v.
Harjo, 284 F. Supp. 2d 96, 68 USPQ2d 1225, 1247 (D.D.C. 2003),
the TTAB held that a challenge to a registration on this ground
requires that a "substantial composite" of the affected
group found the term disparaging or offensive at the time the
registrations issued.
In 1992, a group of Native American petitioners filed a petition
to cancel the six registrations containing or comprising the term
REDSKINS1 under Section 2(a). In 1999, the TTAB held, as
it did yesterday, that the marks were disparaging to Native
Americans and ordered cancellation of the registrations. On appeal,
the U.S. District Court in Washington, D.C. held that the evidence
was insufficient to support a finding of disparagement, and also
dismissed the claim on the ground that petitioners had waited too
long to bring it. Ultimately, the Court of Appeals for the D.C.
Circuit affirmed the dismissal solely on the delay issue, and did
not reach the question of whether the evidence of disparagement was
sufficient.
In 2006, a new group of petitioners filed a new petition for
cancellation. This is the case that was decided yesterday.
Both parties submitted testimony from experts on linguistics,
who debated the extent to which dictionaries between 1967 and 1990
had identified "redskin" as a derogatory term. While the
majority found that there was some evidence to that effect, it did
not rely heavily on either the experts' testimony or the
dictionary evidence.
The majority's decision was based primarily on activities by
the National Congress of American Indians ("NCAI"), an
organization that represents approximately 150 tribes across the
United States. In 1972, NCAI's president met with Edward
Bennett Williams, then the owner of the football team, and asked
that the name of the team be changed because it was offensive. NCAI
also lodged protests in 1988 and 1992. In 1993, after the first
cancellation action was filed, NCAI's Executive Council passed
a resolution declaring that the term "Redskins" had
always been, and continued to be, a pejorative, derogatory and
offensive designation. NCAI's Executive Director testified that
the organization represented approximately 30% of Native Americans
during the relevant time period.
Based primarily on this evidence, the TTAB found that "at a
minimum, approximately thirty percent of Native Americans...found
the term REDSKINS to be disparaging at all times including 1967,
1972, 1974, 1978 and 1990." Thirty percent, said the Board, is
"without doubt a substantial composite. To determine otherwise
means it is acceptable to subject to disparagement 1 out of every 3
individuals."
The football team submitted evidence that many in the Native
American community did not find the term "Redskins" to be
disparaging. But the majority opinion held that this does not
negate the opinions of those who did, stating: "once a
substantial composite has been found, the mere existence of
differing opinions cannot change the conclusion."
The dissenting member, after carefully noting that the case was
not about whether the term "redskins" is disparaging to
Native Americans today, found that the petitioners had failed to
provide sufficient evidence to show that the term was deemed
disparaging by a substantial composite of the community during the
relevant period. Specifically, he found that the dictionary
evidence was inconclusive and that there was no reliable evidence
to corroborate the membership of the NCAI during the relevant
period.
If the registrations ultimately were cancelled, the team's
trademark enforcement efforts would be hampered. A federal
registration is a prerequisite to obtaining enhanced remedies for
counterfeiting. It is also required in order to record trademark
rights with U.S. Customs, which assists in impeding the importation
of infringing goods. Registrations are also important in
challenging infringing uses in social media like Facebook and
Twitter, and to challenge registrations of infringing domain names.
Further, without a registration, the team could not use the
familiar trademark registration notice symbol ®. Thus despite
the team's available legal remedies under other state and
federal laws, in view of the potential perception that the team had
lost all of its trademark rights, it is possible that infringing
goods would proliferate and licensing revenues could be
affected.
Any final outcome is likely years away, however. If, as they did
in the previous case, the Redskins choose to appeal to the U.S.
District Court instead of the Federal Circuit, both parties will be
allowed to submit additional evidence at trial. The Redskins will
no doubt also press the defense on which the TTAB's earlier
similar decision was ultimately reversed; namely the effects of the
delay in seeking relief (including the loss of evidence of public
opinion in the 1960s, when the first of the marks was registered)
makes it unfair to the Redskins to try to resolve these issues now.
The losing party will then be entitled to appeal that decision to
the U.S. Court of Appeals. Whether the subsequent decisions have an
effect on the football team's intention to continue using the
REDSKINS nickname remains to be seen. Public opinion now, rather
than any legal arguments, may in the end play a greater role in
resolving this dispute.
Footnote
1 The contested registrations were: (1) THE REDSKINS
& Design, Reg. No. 0987127 issued in 1972; (2) THE REDSKINS
(Stylized), Reg. No. 0836122 issued in 1967; (3) WASHINGTON
REDSKINS & Design, Reg. No. 0986668 issued in 1974; (4)
WASHINGTON REDSKINS, Reg. No. 0978824 issued in 1974; (5) REDSKINS,
Reg. No. 1085092 issued in 1978; and (6) REDSKINETTES, Reg. No.
1606810 issued in 1990, all covering entertainment services such as
presentations of professional football contests and/or cheerleading
performances.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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