On June 18, 2014, The United States Patent and Trademark Office (USPTO) released its decision to cancel six registrations held by Pro-Football, Inc., the corporate entity that owns the Washington Redskins, on the grounds that the term “Redskins” was disparaging to Native Americans. The cancelled registrations include the Redskins mark and some of the older logos used in promotion and merchandising for the team. A group of Native Americans brought this cancellation proceeding pursuant to a section of the Trademark Act of 1946 that prohibits registration of marks that may disparage persons or bring such persons into contempt or disrepute. In order to win this claim, the petitioners did not have to show that the Redskins marks are disparaging to the Native American community today; rather, they needed to prove the marks were disparaging during the period of 1967-1990 – when the marks were first registered. Based on evidence including testimony from the petitioners, a report from an expert in linguistics, a look into dictionary usage, and a resolution from the National Congress of American Indians (NCAI), the Trademark Trial and Appeal Board (TTAB) determined the marks were disparaging and that the registrations should never have been granted.
This is not the first time the TTAB has cancelled Pro Football, Inc.’s trademark registrations using the term “Redskins.” In 1992, seven Native Americans filed a petition to cancel the Pro Football, Inc.’s registrations in a case called Harjo v. Pro-Football, Inc. Just like the current ruling, the TTAB held that the marks were disparaging to Native Americans and ordered the registrations be cancelled. However, eventually the United States Court of Appeals for the District of Columbia Circuit reversed the decision, based on Pro-Football, Inc.’s defense of laches – an equitable defense that there has been an unreasonable delay by the party bringing a claim, ultimately forfeiting the right to seek relief.)
As before, Pro-Football, Inc. will appeal this decision, meaning the trademark registrations are not lost until a final judgment is made. Importantly, however, the judge issuing the opinion that cancelled the registrations suggested that this case may not meet the same fate as Harjo. In the opinion, Administrative Judge Kuhlke states that an appellate court should prohibit the defense of laches. According to Judge Kuhlke, since the use of the term Redskins compromises a broader public interest, the amount of time a few people waited to bring a claim on behalf of the community should not matter. Further, as laches is an “equitable” defense, Judge Kuhlke suggests that it is challenging to rationalize a balancing of equities where a registrant’s financial interest is weighed against human dignity.
Importantly, this decision does not require Redskins owner Daniel Snyder to stop using the disputed registrations or to drop the team’s name entirely. Instead, if the cancellations are upheld, it simply strips Pro Football, Inc. and the Redskins of particular benefits federal mark-holders are entitled to under the Trademark Act (e.g., a legal presumption of ownership, the ability to seek statutory damages in federal court, or aid from United States Customs and Border Protection in preventing counterfeiters from importing knock-off Redskins apparel). Thus, losing federal registration of a trademark does not necessarily mean all legal rights in the mark are lost. The owner of the mark still has rights in the mark based on actual use of the mark in commerce – such rights are rooted in the common law. However, one may certainly question how easy it will be for Pro Football, Inc. or the Redskins to enforce such common law rights, especially on the heels of a decision made by a federal administrative agency (the U.S. PTO) that the term “Redskins” is not capable of being issued a trademark registration in this context.
Practically speaking, it is possible, if not certain, that Mr. Snyder will now face increased pressure to change the team name. The NFL splits merchandise revenue 31 ways; every team but the Cowboys shares in the merchandise revenue (the Cowboys have their own exclusive merchandise deal). Since the Redskins are the third-most valuable franchise in the NFL (according to Forbes) and have millions of dollars in merchandising revenue, it is possible that the other 30 teams may pressure Mr. Snyder and Pro-Football, Inc. to make a change.
This issue is far from over as appeals will likely take years to resolve the matter. However, this decision represents another step forward by those who want to see the team name changed. Movements like changethemascot.org (you may have seen their commercial during the NBA finals) have tried to persuade Washington to change its team name by influencing public opinion surrounding the name. Public opinion alone, however, does not seem to be enough to cause Mr. Snyder to make a change. While this current ruling does not appear to directly impact the team’s financial situation, it is a noteworthy victory adding momentum to the efforts of those working to force the team to change its name. And though Mr. Snyder has emphatically stated that he will “never” change the team name, the petitioners and the NCAI just got one step closer to making a name change a reality.