Today, June 18, 2014, the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (the “Board”) ordered that six federal registrations for the Washington Redskins football team’s REDSKINS trademark be cancelled. The order is the latest development in a long-running dispute between the pro football team and Native American rights advocates, and social media and the Internet in general are buzzing with commentary on the Board’s decision.
The decision was the result of a Petition to Cancel the registrations filed pursuant to the federal Trademark Act (the Lanham Act) by six Native American individuals who asserted that the term “redskin” is a derogatory racial slur that disparages Native Americans. Much of the online discussion is about whether the term “Redskins” is, in fact, a derogatory or disparaging term, and whether the Washington, D.C. football team will retain the name following the Board’s decision. Here are five things you should know about this case.
- This case began over 20 years ago. While styled as a new case, this cancellation proceeding actually began over 20 years ago. In October, 1992, seven Native American individuals filed a petition with the Board to cancel the Washington Redskins’ federal registrations for the REDSKINS trademark registrations on the grounds that the mark is immoral, scandalous and disparaging to Native Americans. Litigation in that case lasted seven years and resulted in the Board ordering the registrations for the REDSKINS marks cancelled in 1999. The football team appealed that decision to the U.S. District Court for the District of Columbia, and that court reversed the Board’s decision to cancel the REDSKINS trademark registrations based on (1) lack of evidence that the word “Redskins” is disparaging to Native Americans, and (2) the defense that the parties requesting cancellation of the registrations had waited too long to bring their claims (the “laches” defense). Additional appeals were made, with the final result of the 1992 proceeding being that the REDSKINS registrations would not be cancelled. However, in 2006, during the appeals process, the case decided today was filed, again petitioning to cancel the registrations for the REDSKINS trademark. The parties to the more recent case agreed to argue their case using the exact same evidence presented in the earlier case, then on appeal. So effectively, the 1992 case was “continued” and re-assessed in its entirety in today’s decision.
- This is not “new law.” Under Section 2(a) of the Trademark Act, a person is not entitled to register a trademark that is or comprises immoral, deceptive or scandalous matter, or matter that is likely to disparage a group of people. This particular case is noteworthy because of the fame of the trademark in question. Nevertheless, the Board’s decision provides some guidance on what may be required to prove that a mark is disparaging to a group of people. The Board rested its decision on whether a “substantial composite” of Native Americans believe that the term “Redskins” was derogatory or disparaging to Native Americans. In its findings, the Board determined that 30% of Native Americans found the term to be disparaging and further concluded that 30% was unquestionably a “substantial composite” of the group.
- Washington’s football team can remain the WASHINGTON REDSKINS. Despite the Board ordering that the trademark registrations be cancelled, the Board’s order does not, by itself, prohibit the Washington Redskins from continuing to use the REDSKINS mark in any manner. The Board’s authority is limited to decisions about the registration of trademarks with the U.S. Patent and Trademark Office. The Board is without authority to make determinations regarding the football’s team’s rights to use the trademark. That authority is reserved to the court system or, possibly, the legislature. Further, the Board’s decision does not mean that others can freely use the REDSKINS trademark in a manner that is likely to create confusion with the Washington Redskins football team. The football team will retain common law rights in the trademark despite any loss of its registrations. Nevertheless, the Washington Redskins football team may be hesitant to sue another for infringing its marks because of the risk that a court could possibly determine that the team has no protectable interest in the name because of its disparaging nature. Stay tuned!
- The America Invents Act impacted the Board’s decision—and may affect future decisions. The Board made an interesting decision to revisit the laches defense in the case decided today. As explained above, the 1992 proceeding ended with the D.C. Circuit Court of Appeals affirming that the defense of laches applied to the petitioner’s claim that “Redskins” is a disparaging term, and resulted in the football team being allowed to keep its trademark registrations. Nevertheless, in the case decided today, the Board asserted that the laches defense does not apply to this disparagement claim. The Board reasoned that the laches defense was not appropriate in this case because of the overriding public interest in removing from the federal trademark register marks that disparage a substantial segment of the population beyond the individual parties to the case. The Board seems to justify its departure from the D.C. Court of Appeals’ earlier ruling based on a provision in the 2011 America Invents Act that changes the venue for any appeal of today’s decision from the District Court for the District of Columbia to the District Court for the Eastern District of Virginia. Essentially, the Board reasoned that the new venue in the Fourth Circuit, as opposed to the D.C. Circuit, is likely to agree that the laches defense does not apply. This move by the Board may have implications for other previously decided D.C. Circuit precedents—maybe the Board will begin to revisit other issues on which it has been reversed, given the new Fourth Circuit venue.
- The Washington Redskins undoubtedly will appeal. Although this case has been ongoing for more than 20 years, it is not likely to be over any time soon. Given the fame of the Washington Redskins football team, and the REDSKINS mark, it is likely the organization will continue to fight to keep its trademark registrations alive. Further, today’s case was decided 2-1 and the dissenting opinion in today’s decision may very well hold the key to the football team’s claims on appeal. In the dissent, one of the Board’s judges pointed out that the 1992 case was originally reversed for lack of sufficient evidence to establish that the word “redskins” is disparaging, as well as the defense of laches. As explained above, the parties to this case merely presented the exact same evidence from the earlier case, with few modifications. The dissent argues that the same evidence should again be found insufficient, and therefore the REDSKINS registrations should not be cancelled.
Today’s decision certainly represents a milestone in this long-running contest, but the final whistle has not yet been blown. Trademark professionals, sports fans and Native American advocates alike undoubtedly will continue to follow this case closely.