Why have efforts to cancel the Washington Redskins’ trademarks proven ineffective? In short, because time is on the Redskins’ side.

Section 2(a) of the Lanham Act prohibits registration of trademarks that may, among other things, disparage particular groups or cultures. But a federally registered trademark may only be cancelled under Section 2(a) if the trademark would have been considered offensive at the time it was registered. Modern sentiment is irrelevant for purposes of Section 2(a), and establishing that American Indians would have found the team’s trademarks offensive in the 1960s has proven difficult. However, the recently introduced Non-Disparagement of American Indians in Trademark Registrations Act of 2013 seeks to circumvent that hurdle by prohibiting registration of trademarks that contain the term “redskin” and requiring cancellation of any registered trademarks that contain the same.

Background

In 1992, in Harjo v. Pro Football, Inc., a group of seven American Indians filed a cancellation action before the Trademark Trial and Appeal Board (TTAB) alleging that several trademarks owned by the Redskins NFL franchise’s corporate entity, Pro-Football, Inc., impermissibly disparaged American Indians in violation of Section 2 of the Lanham Act, 15 U.S.C. § 1052(a). Harjo v. Pro Football, Inc., 50 U.S.P.Q. 2d (BNA) 1705, at 1748 (T.T.A.B. 1999). While the TTAB initially cancelled the trademark registrations as disparaging, a district court ultimately reversed the cancellation based on the defense of laches. Id., rev’d, 284 F. Supp. 2d 96, 144 (D.D.C. 2003). The district court held that filing suit eight years after the youngest petitioner reached the age of majority constituted an unreasonable and prejudicial delay in pursuing the claims. Harjo, 284 F. Supp. 2d at 144. The Harjo petitioners engaged in a protracted series of appeals, and in 2009, the Supreme Court denied certiorari. See Harjo v. Pro Football Inc., 565 F.3d 880 (D.C. Cir. 2009), cert. denied, 130 S.Ct. 631 (2009).

Subsequently, in Blackhorse v. Pro Football, Inc., a group of five American Indians ages 18 – 24 filed a nearly identical cancellation action before the TTAB with hopes of avoiding the laches defense and obtaining a judgment on the merits. Blackhorse v. Pro Football, Inc., Cancellation No. 92046185 (T.T.A.B. Aug. 11, 2006). On March 7, 2013, the TTAB conducted an oral hearing in Blackhorse and on March 20, 2013, Representative Eni Faleomavaega (D-Am. Samoa) introduced into the House of Representatives the Non-Disparagement of American Indians in Trademark Registrations Act of 2013 (H.R. 1278), which would amend the Lanham Act to prohibit registration of new trademarks containing the term “redskin” and require cancellation of all such existing trademark registrations.

Federal Trademark Law And The “Substantial Composite” Standard

Section 2(a) of the Lanham Act prohibits the registration of trademarks viewed as disparaging to persons, institutions, or beliefs. While neither the Lanham Act nor its legislative history provide much clear guidance on what makes a trademark disparaging, the TTAB has defined “disparagement” as “essentially a violation of one’s right of privacy—the right to be ‘let alone’ from contempt or ridicule.” Greyhound Corp. v. Both Worlds, Inc., 6 U.S.P.Q. 2d (BNA) 1635, 1639 (T.T.A.B. 1988).

In interpreting Section 2(a) today, the TTAB uses a two-step inquiry to determine whether a trademark is disparaging. First, the term’s likely meaning is established at the time of registration based on dictionaries, encyclopedias, opinion polls and other reference materials available at that time. Second, a determination is made whether a “substantial composite” of the identified group would have found the trademark disparaging at the time of registration. A trademark that was acceptable to the identified group when it was registered, but that later became viewed as disparaging, will fail to satisfy the legal standard for cancellation.

The Blackhorse Case

In Blackhorse, petitioners filed a cancellation action alleging that several trademarks owned by the NFL Redskins franchise impermissibly disparaged American Indians in violation of Section 2(a) of the Lanham Act. On March 7, 2013, the TTAB conducted a hearing to determine whether the term “redskin” is a disparaging trademark under Section 2(a).

When questioned about their motives, Petitioners stated clearly that the suit “makes an important statement about the disparaging nature of the team’s name.” Suzan Shown Harjo, president of the Morning Star Institute advocacy group and a party to the original Harjo litigation, added that the word “redskin” is “the worst thing we can be called in the English language.” Counsel for Pro-Football, however, has maintained that the team’s name is neither insulting nor offensive, but instead that it honors American Indians.

How people today perceive the term “redskin,” however, is largely irrelevant to the legal standard for cancellation under Section 2(a). The Lanham Act only mandates cancellation of trademark registrations that a “substantial composite” of the identified group would have found disparaging at the time of registration. While the USPTO has rejected applications of at least three new “redskins”-related trademarks as disparaging since 1996, sentiment regarding the “redskins” term before 1990 was significantly less clear than it is today. The trademarks at issue were registered on various dates between 1967 and 1990, and establishing that a substantial composite of American Indians would have found the “redskins” term disparaging in 1967, for example, has proven difficult. In their brief, Petitioners relied heavily on evidence proffered in Harjo, including dictionaries, reference works, and objections from American Indian groups made during the second half of the twentieth century. Petitioners further relied on expert testimony that a sharp decline in usage of the term “redskin” in print and film beginning in the 1950s indicates that the term was viewed as derogatory at that time. Regardless, many expect the TTAB to take as long as a year to issue a ruling, and the Redskins likely will appeal any order cancelling the trademark registrations. Thus, any definitive answers on this matter from the TTAB will not be forthcoming for quite some time.

The Non-Disparagement of American Indians in Trademark Registrations Act of 2013

Two weeks after the Blackhorse hearing, Representative Faleomavaega introduced his proposed legislation, which is designed to prohibit trademark protection for the term “redskins.” If passed, H.R. 1278 would amend the Lanham Act to specifically prohibit “the disparagement of Native American persons or peoples through trademarks that use the term ‘redskin.’” In addition, the bill would require cancellation of any “mark containing the term ‘redskin’ or any derivation of the term ‘redskin.’”

The bill’s co-sponsors include Representatives Tom Cole (R-Okla.) and Betty McCollum (D-Minn.), the co-chairpersons of the Congressional Native American Caucus, and Representative John Lewis (D-Ga.), a known civil rights advocate. The bill has been referred to the House Judiciary Committee, but Congress has indicated no plans to hold an associated hearing.

The Future of “Redskins” Trademarks

While the Blackhorse cancellation and H.R. 1278 have garnered significant media attention, it is important to note that their immediate effects are likely limited. Petitioners filed the Blackhorse cancellation almost seven years ago, and a final decision in the case is not expected any time soon. Similarly, H.R. 1278 has gained little traction in the House and remains without a companion bill in the Senate.

Ultimately, even if owners of disparaging trademarks were to lose their federal trademark registrations under cases or statutes like Blackhorse and H.R. 1278, the victory would be largely symbolic. While owners of unregistered trademarks no longer benefit from many of the advantages of federal registration, they still retain substantial trademark rights. Federal protection for unregistered trademarks is available under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), which creates a civil cause of action for false designation of origin and unfair competition. In addition, owners may protect unregistered trademarks using common law unfair competition laws or state statutes like the Model Trademark Bill or the Uniform Deceptive Trade Practices Act. Finally, trademark officials do not have the authority to prohibit the sale of goods bearing disparaging trademarks, nor can they order the owners of such trademarks to pay damages to anyone offended by the trademarks. Cancellation, therefore, while potentially vindicating for petitioners, would likely have very little practical effect on trademark owners’ ability to enforce even disparaging trademarks. Rather, negative publicity may prove to be a more realistic concern when enforcing a disparaging trademark.