In its June 18, 2014 Blackhorse 1 decision, the TTAB ordered six Redskins trademarks to be cancelled as disparaging to Native Americans at the time they were registered. The impact of this decision was discussed in our earlier article.
On July 8, 2015, the United States District Court for the Eastern District of Virginia, in Pro-Football, Inc. v. Amanda Blackhorse, et al.2, affirmed the TTAB’s decision to cancel the six Redskins trademarks from Federal Registration, finding that “the marks consisted of matter that ‘may disparage’ a substantial composite of Native Americans and bring them into contempt or disrepute.” On de novo review, the Court rejected all seven of Appellant Pro-Football, Inc.’s (“PFI”) arguments on summary judgement, and upheld the USPTO’s cancellations.
The Court specifically noted that the term “redskins” was disparaging during the relevant time period when the marks were registered from 1967 to 1990, emphasizing that intent to disparage was not necessary. Although since prior disputes over the registration of the same marks began in 1992, the USPTO has suspended registrations and refused applications which contain the word “REDSKINS,” it is important to emphasize that the determination whether a mark is disparaging is based on the time it was filed.
Finally, the Court was careful to note that although the marks were barred from Federal registration, PFI is nevertheless free to continue using them. Moreover, PFI’s use of the marks in commerce affords them limited common law rights in the marks that are separate and apart from the rights granted to a federally registered mark. Therefore, although PFI can continue to use the Redskins mark, it will be more difficult for it to enforce its claim of exclusive rights to them.
On August 4, 2015, PFI filed an appeal to the 4th Circuit.
The authors wish to thank Ms. Elana Freeman for her assistance in preparing this article.