After two decades and two separate proceedings brought by separate groups of Native Americans, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) has again cancelled the federal registrations of the Washington Redskins trademarks.
Federal trademark law under the Lanham Act does not permit registration of trademarks that may disparage individuals or groups or bring them into contempt or disrepute (15 U.S.C. Section 1052(a)). In 1992, Harjo (and other Native Americans) petitioned to cancel Pro Football, Inc.’s Washington Redskins trademark registrations. The TTAB granted Harjo’s petition on the ground that the Redskins mark was disparaging to Native Americans. Harjo v. Pro Football, Inc., 50 USPQ2d 1705 (TTAB 1999). Pro Football appealed the TTAB’s decision and in 2005, the D.C. Circuit Court reversed the TTAB’s holding on procedural grounds––plaintiffs waited too long to bring the case and lacked standing. Pro Football, Inc. v. Harjo, 415 F.3d 44 (D.C. Cir. 2005).
In 2006, another group of Native Americans––this time with standing––again petitioned to cancel the Washington Redskins’ trademark registrations. On June 18, 2014, the TTAB once again found the Washington Redskins’ trademarks to be disparaging to Native Americans and cancelled the marks’ registrations. Blackhorse v. Pro Football, Inc. (TTAB Cancellation No. 92046185). Just like before, Pro Football vowed to appeal.
This time, perhaps Pro Football will reconsider its fight to keep the Redskins marks. Public and Congressional disapproval of disparaging terms for minorities is at an all-time high. Nonetheless, TTAB’s decision will cost Pro Football the benefits a trademark registration provides such as a presumption of validity of the mark and registration with U.S. Customs to prevent importation of counterfeit goods. The TTAB decision does not mean that the football team has to change its name or stop using the Redskins trademarks. But if the team is unable to maintain its registrations, the team likely will change its name. If the decision stands, others may be encouraged to file petitions to cancel older marks considered disparaging to certain segments of the population.