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Redskins ruling is consistent with TTAB precedent

Pillsbury Winthrop Shaw Pittman LLP

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USA August 8 2014

This article was originally published in Law360 on July 29, 2014.

In Blackhorse v. Pro-Football Inc.,1

the U.S. Patent and Trademark

Office once again canceled various

registrations for trademarks used by

the Washington Redskins football

team as being disparaging to Native

Americans. While this highly

publicized decision may have taken

some by surprise, the holding is in

line with several other recent PTO

decisions involving the Lanham Act’s

prohibition on the registration of

disparaging marks, decisions which

received far less media attention and

public comment.

On June 18, 2014, the Trademark Trial

and Appeal Board issued a decision in

the second proceeding brought by a

group of Native Americans to cancel

registrations for various “Redskins”

marks used by the National Football

League and the Washington Redskins.

The board held that the marks

were disparaging to a substantial

composite of Native Americans as

of the registration date of each mark,

in violation of Section 2(a) of the

Lanham Act, which prohibits registration

of a mark that “may disparage”

persons or “bring them into contempt

or disrepute.”2 As a result, the board

ordered the cancellation of six

Redskins trademark registrations

owned by Pro-Football Inc., the

parent company of the Washington

Redskins, issued between 1967

and 1990.

This is not the first time that the

board has considered whether a

mark is disparaging to a particular

group, nor is this the first time the

board has considered whether these

particular marks are disparaging to

Native Americans.

Harjo Line of Cases

In 1992, a different group of Native

Americans filed a petition to cancel3

the same registrations on virtually

identical grounds. Pro-Football

denied that the Redskins marks were

disparaging and asserted various

affirmative defenses, including laches.

After striking all of Pro-Football’s

affirmative defenses, the board

issued a decision on the merits in

1999, holding that the marks were

disparaging when registered and

ordering the registrations canceled.4

Pro-Football appealed to the District

Court for the District of Columbia.

On a motion for summary judgment,

the district court reversed the cancellation,

stating that the Board’s finding

of disparagement was not supported

by substantial evidence and that the

doctrine of laches precluded consideration

of the case.5 The petitioners

appealed to the Court of Appeals

for the District of Columbia Circuit,

which ruled that the lower court

had applied the wrong standard in

evaluating the laches defense as to

one of the petitioners.6

Patricia Cotton

Intellectual Property

+1.650.233.4758

[email protected]

Patricia Cotton is an attorney in Pillsbury’s

Silicon Valley office.

Pillsbury Winthrop Shaw Pittman LLP

Intellectual Property

Redskins Ruling is Consistent

with TTAB Precedent

This article was originally published in Law360 on July 29, 2014.

by Patricia Cotton

On remand, the district court held that the claim still was barred by laches (even with application of the correct laches standard)7, and the D.C. Circuit affirmed.8 Thus, Harjo was resolved solely on the procedural issue of laches and the D.C. Circuit never evaluated the board’s ruling that the Redskins marks were disparaging when registered or the district court’s reversal of the original finding on the merits.

Test for Disparagement

The Blackhorse proceeding was filed in 2006 by six different Native Americans, two of whom had very recently turned 18 (the date from which laches begins to run). Given these petitioners’ minimal delay in filing the cancellation, as well as the broader public policy interest at stake in the case, the board in Blackhorse dispensed with Pro-Football’s laches argument in relatively short order, focusing its opinion almost entirely on the threshold question of disparagement.

Determining whether a mark is disparaging under Section 2(a) of the Lanham Act, involves a two-step inquiry:

1.

What is the meaning of the particular term, as it appears in the mark and as that mark is used in connection with the goods and services identified in the registration?

2.

Is such meaning one that is disparaging to a substantial composite (which is not necessarily a majority) of the group identified by the particular term?

In deciding the second part of the test, the most relevant views are those of the identified group, not necessarily the views of the American public as a whole. Moreover, both questions must be answered as of the registration date of the mark. Thus, in both Harjo and Blackhorse, the board was charged with determining, as of 1967, 1974, 1978 and 1990 (the registration dates of the marks at issue), the meaning of the term “redskins” as used in Pro-Football’s marks and in connection with professional football-related services, and whether such meaning was disparaging to a substantial composite of Native Americans.

Evidentiary Record

The parties to the Blackhorse proceeding stipulated that nearly the entire Harjo record be submitted into evidence through a notice of reliance, reserving the right to object to such evidence solely on the basis of relevance. All other possible admissibility objections, including hearsay, were waived. As a result, in the Blackhorse proceeding, the content of the admitted Harjo evidence could be considered for the truth of the matters asserted, a potentially critical distinction with regard to some evidence found to be hearsay or to lack foundation in Harjo.

As to the first part of the disparagement test, the board in Blackhorse held that the evidence overwhelming supported a determination that the term “redskins,” as it appears in Pro-Football’s various marks, means “Native Americans.” Although the term also refers to the Washington Redskins football team, even when used in the context of Pro-Football’s marks and in connection with football-related services, the term still carries the allusion to Native Americans inherent in its original definition.

With regard to the second part of the test, the board found that the evidence supported a determination that the term “redskins” was disparaging to a substantial composite of Native Americans during the relevant time period of 1967-1990. The most probative evidence for the board fell into two categories: (1) a general analysis of the word drawn primarily from dictionary definitions and media references, and (2) the specific views of various Native Americans themselves.

In particular, the record included excerpts from multiple dictionaries whose definition of “redskin” included a restrictive usage label identifying the term as “often offensive” and expert testimony from both sides that the adoption of usage labels by dictionary editors usually reflects the influence of sociopolitical pressure groups. The board found that the dictionary evidence showed a clear trend, beginning in 1966 and continuing to 1990, to label the term “redskin” as “offensive.”

The record further showed a simultaneous and marked decrease in media usage of the term “redskin” to refer to Native Americans, with evidence of widespread usage of the term prior to the late 1960s but very little usage of the term in this context after 1970. In the board’s view, this evidence clearly demonstrated that during the relevant period of 1966-1990 there was increasing public recognition that the term “redskin” was offensive and disparaging to Native Americans.

With respect to firsthand views

Pillsbury Winthrop Shaw Pittman LLP

Intellectual Property

of Native Americans, the record

contained a 1993 resolution adopted

by the National Congress of American

Indians (“NCAI”), a nationwide

intertribal organization founded

in 1944, stating that “the term

REDSKINS is not and has never been

one of honor and respect, but instead

has always been and continues to be

a pejorative, derogatory, denigrating,

offensive, scandalous, contemptuous,

disreputable, disparaging and racist

designation” for Native Americans.

Deposition testimony from NCAI’s

executive director in 1996 indicated

that membership at the time of the

1993 resolution was approximately

150 tribes, or roughly 30 percent of

Native Americans.

The board found the NCAI resolution

to be a credible and reliable

document representing the views

of a substantial composite of Native

Americans. While the resolution was

adopted three years after the relevant

timeframe, the board found it to be

persuasive evidence of the views of

Native Americans during the relevant

timeframe, given the particular

language of the resolution setting

forth the past and ongoing viewpoints

of the membership of NCAI.

The record also included evidence

of a 1972 meeting between Edward

Bennett Williams, then president

and part-owner of the Washington

Redskins football team, and a

delegation of seven representatives

from various Native American organizations

(including NCAI), at which

meeting the representatives voiced

their objections to the Redskins team

name as disparaging. In addition to

deposition testimony from at least

one meeting attendee, the record

contained various news articles

from 1972 about the meeting,

the topics discussed, and the

views asserted by the Native

American attendees.

Finally, the record included numerous

letters from individual Native

Americans protesting Pro-Football’s

use of the Redskins name as offensive.

Again, many of such letters were

written at the end of, or just after, the

relevant time period however, the

board found them to be persuasive

evidence of the writers’ viewpoints

during the relevant time period.

Majority Decision

The board concluded that the

evidence of record in Blackhorse

established that, at the times of

the various registrations, the term

“redskins” was an ethnic term

meaning “Native Americans” that was

disparaging to at least 30 percent of

Native Americans (the approximate

membership of the NCAI), which

percentage is a “substantial

composite” of that group.

In the majority opinion,

Administrative Trademark Judge

Karen Kuhlke noted that neither

Pro-Football’s alleged honorable

intent with regard to use of the

term “redskins” nor the generally

inoffensive nature of football-related

services precluded these findings.

Moreover, she noted that although

a portion of the American public

(and even some portion of Native

Americans) may not have found the

term “redskins” to be disparaging

in the context of football during the

relevant time period, those differing

opinions do not erase the perceptions

of the substantial composite of Native

Americans who did find the term to

be disparaging.

Dissent

In his dissent, Judge Marc Bergsman

argued strenuously that the evidence

of record did not support the

majority’s findings, specifically “that

the dictionary evidence relied upon by

the majority is inconclusive and there

is no reliable evidence to corroborate

the membership of the National

Council of American Indians.” He

chastised the petitioners for simply

reusing the Harjo trial record without

substantial augmentation (a record

that he characterized as stale and

nothing more than a “database dump”

with “no order or structure ... that

told a compelling story or presented

a coherent case”) and criticized the

majority for basing its conclusions on

such insufficient evidence.

In particular, Judge Bergsman argued

that evidence of just two dictionary

entries from the late 1960s and early

1970s labeling the term “redskin”

as “often offensive” leaves open the

possibility that the term is not “always

offensive” and may not be offensive

when used in connection with the

name of a football team. With regard

to the 1972 meeting between Native

American representatives and Edward

Bennett Williams, Judge Bergsman

argued that newspapers articles and

the deposition testimony of only one

meeting attendee were insufficient

evidence as to what transpired

at the meeting, the particular

organizations participating in the

meeting, or the people represented by

those organizations.

Finally, he argued the evidence of

record did not adequately substantiate

the membership of NCAI at

the relevant time periods or the

organization’s authority to take, on

behalf of its members, the position

www.pillsburylaw.com

Redskins Ruling is Consistent with TTAB Precedent

on the disparaging nature of the term “redskins” set forth in the 1993 NCAI resolution. According to Judge Bergsman, the evidence supporting the majority’s finding that NCAI represented approximately 30 percent of Native Americans during the relevant time period “is a house of cards that collapses upon examination.”

Accord With Board Decisions in Heeb and Geller

While the majority ruling in Blackhorse may have taken some people by surprise, the decision is squarely in line with two other recent TTAB decisions, In Re Heeb Media LLC[9] and In Re Pamela Geller and Robert B. Spencer,10 issued quietly with little media coverage or public fanfare, in which the board found the marks at issue to be disparaging under Section 2(a) of the Lanham Act. Although these cases each involved the ex parte appeal of an examining attorney’s refusal to register the mark, they nevertheless are instructive of the quantum of evidence the board has deemed sufficient to show that a term is disparaging to a substantial composite of the identified group.

In re Heeb Media concerned an application to register the mark “Heeb” for clothing. In her refusal to register the mark on the basis that it was disparaging to a substantial composite of Jewish people, the examining attorney presented

several dictionary definitions

defining “Heeb” as a derogatory

term for a Jewish person, and various news articles reporting that people representing Jewish groups or speaking in their individual capacity as Jews considered the term to be disparaging.

Heeb Media, who also publishes a magazine directed to the Jewish community under the title “Heeb,” contended that a finding of disparagement should not be based on “isolated editorial comments made by members of one organization or one vocal individual whose opinions do not represent Jewish popular thought or the cultural mainstream.” In particular, the applicant submitted a 2005 dictionary excerpt that defined the term as “Jewish” with no restrictive usage label, and statements from various Jewish organizations and individuals who did not find the term offensive.

Despite the conflicting evidence, the three-judge panel unanimously affirmed the refusal in a precedential opinion written by Judge Kuhlke. The board found the dictionary definitions to be persuasive evidence of the term’s derogatory meaning (despite being not entirely unanimous in their inclusion of a restrictive usage label), and while the record reflected disparate views within the Jewish community as to whether the term was disparaging, the board found clear evidence that a substantial composite of Jewish people held such view.

The examining attorney has presented evidence from various segments of the Jewish community, including the Anti-Defamation League, a university professor, rabbis, a talk-show host and ordinary citizens. Although perhaps among many of the college-age population to whom applicant’s magazine is directed the word HEEB may not have the same derogatory connotation, the evidence is clear that, at a minimum, among the older generation of Jews the term retains its negative meaning. The post-college age Jewish population must be considered a substantial composite for purposes of our analysis.

Similarly, in In re Pamela Geller decided early last year in a nonprecedential opinion, the board inferred the opinion of a substantial composite of the referenced group by extrapolating the stated opinion of a few group representatives as to the disparaging nature of the mark. In that case, applicants Pamela Geller and Robert Spencer sought to register the mark “Stop the Islamisation of America” in connection with “providing information regarding understanding and preventing terrorism.”

The examining attorney introduced dictionary definitions indicating that the term “Islamisation” means “converting or conforming to Islam” and argued that the overall mark would be understood to mean that action must be taken to cease the conversion of Americans to Islam. When viewed in the context of applicant’s services, the examining attorney argued the mark conveys the further message that such action is necessary to prevent terrorism.

Applicants argued that the term “Islamisation” has a much narrower meaning — relating only to conformity with Islamic law — and therefore the mark refers only to halting the “sectarianization of a political society through efforts to make it subject to Islamic law.” Although applicants cited several uses of the term in this context by

Pillsbury Winthrop Shaw Pittman LLP

Intellectual Property

academic, political and legal experts, the board agreed with the examining attorney that the dictionary definitions were more reflective of the current understanding of the term and that many people would view the mark to mean that the spread of Islam in America is undesirable and should be stopped in order to avoid or reduce terrorism.

The board then turned to the second inquiry of the disparagement test to determine whether the mark is disparaging to a substantial composite of American Muslims. The board noted that the mark creates a direct association between Muslims and terrorism, and concluded that “the majority of Muslims are not terrorists and are offended by being associated as such” on the basis of various newspaper articles quoting the express opinion of Muslims speaking in their individual capacities or reporting that such opinion is held by “a record number” of American Muslims. The board therefore concluded that the mark “Stop the Islamisation of America” is disparaging to a substantial composite of American Muslims.

The U.S. Court of Appeals for the Federal Circuit agreed, and issued

an order this spring affirming the board’s refusal to register the mark.11 The appellate court referred to the board’s listing of “multiple sources where Muslims stated they were concerned by ... ‘anti-Muslim sentiment that automatically associates Islam with terrorism’ ” and concluded that the board’s finding that the mark is disparaging to a substantial composite of American Muslims was supported by substantial evidence.

Extra Scrutiny in Blackhorse

The majority ruling in Blackhorse appears consistent with these recent board decisions. The second prong of the test for disparagement under Section 2(a) of the Lanham Act may be satisfied with a rather modest evidentiary showing. In both Heeb and Geller, the board inferred the opinion of a substantial composite of the identified group by extrapolating the stated opinion of a few group representatives without seriously scrutinizing the representative capacity of those individuals or requiring a strict mathematical calculation of the number of persons on whose behalf they purportedly were speaking.

For example, the board in Heeb relied on a quote from Ken Jacobson, the associate national director of the Anti-Defamation League, that the term “Heeb” “is offensive to many Jews” without questioning the authority of the ADL or Jacobson to speak for Jews or requiring any evidence that “many Jews” is a substantial composite of the group. Similarly, the board in Geller relied on a quote from Maajid Nawaz, director of the Quilliam Foundation, a counter-extremism think tank based in the U.K., that “the majority of Muslims are not Islamists,” without requiring further evidence as to Nawaz’s authority to speak for any Muslims, much less a majority thereof.

Yet this is the type of evidentiary foundation the Blackhorse dissent appears to require as a prerequisite to finding that any statement made by the National Congress of American Indians or an NCAI representative was, in fact, the opinion of anyone other than the individual speaker, let alone the opinion of a substantial composite of Native Americans.

Although the majority opinion details, at great length, the evidence supporting its determination that, at a minimum, the membership of the NCAI (roughly 30 percent of Native Americans) found the term “redskins” to be disparaging on the relevant dates and that such group represented a “substantial composite” of Native Americans, the dissent characterizes the majority’s analysis as mere “gyrations.”

To show that a substantial composite of Native Americans held a particular opinion in 1967, it could be argued that Judge Bergsman requires a near person-by-person poll of Native Americans living at that time: “It is astounding that the petitioners did not submit any evidence regarding the Native American population during the relevant time frame, nor did they introduce any evidence or argument as to what comprises a substantial composite of that population thereby leaving it to the majority to make the petitioners’ case have some semblance of meaning.”

There likely are several circumstances that underlie the heightened scrutiny of the evidence in Blackhorse. Undoubtedly, the inter partes nature of the proceeding was a factor. The Blackhorse petitioners were required to prove their claim by a preponderance of the evidence, while a lower standard of proof is required in ex parte cases, such as Heeb and Geller. The examining attorneys in those cases had only to put forth “substantial evidence” or “more than a scintilla of evidence” in support of their prima facie case.

www.pillsburylaw.com

Redskins Ruling is Consistent with TTAB Precedent

www.pillsburylaw.com

In addition, the politicized and

high-profile nature of the topic likely

played a role. The PTO anticipated

that the Blackhorse decision would

bring intense scrutiny and public

comment and therefore issued,

simultaneously with the announcement

of the decision, a list of media

talking points and an “Official USPTO

Statement” clarifying that the

decision relates only to Pro-Football’s

right to maintain its federal registrations

and “does not, however, require

the trademarks in the involved

registration to be changed or no

longer be used by Washington, D.C.’s

pro football team.”

Finally, however, the Blackhorse

decision and the surrounding

firestorm seem to betray the lingering

existence of the concept of the “noble

savage” in American culture — the

romantically idealized portrayal

of Native Americans that may fuel

the opinion of some, including

Washington Redskins owner Dan

Snyder, that the team name honors

and celebrates Native Americans

rather than demeans them. Of course,

the opinions of the team’s owner —

now and when the “Redskins” registrations

were issued — are irrelevant

to the legal analysis in Blackhorse.

Nevertheless they seem to reflect the

persistent belief of some that there

remains a place in American popular

culture for a term which many Native

Americans consider a racial epithet.

Endnotes

1 Cancellation No. 92046185 (June 18, 2014).

2 15 U.S.C. § 1052(a).

3 Cancellation No. 92021069.

4 Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d 1705 (T.T.A.B. 1999).

5 Pro-Football Inc. v. Harjo, 284 F.Supp.2d 96; 68 U.S.P.Q.2d 1225 (D.D.C. 2003).

6 Pro-Football Inc. v. Harjo, 415 F.3d 44; 75 U.S.P.Q.2d 1525 (D.C. Cir. 2005).

7 Pro-Football Inc. v. Harjo, 567 F.Supp.2d 46; 87 U.S.P.Q.2d 1891 (D.D.C. 2008).

8 Pro-Football Inc. v. Harjo, 565 F.3d 880; 90 U.S.P.Q.2d 1593 (D.C. Cir. 2009).

9 89 U.S.P.Q.2d 1071 (T.T.A.B. 2008).

10 Serial No. 77940879 (February 7, 2013) (not precedential).

11 In re Geller, 751 F.3d 1355; 110 U.S.P.Q.2d 1867 (C.A Fed. 2014).

Pillsbury Winthrop Shaw Pittman LLP | 1540 Broadway | New York, NY 10036 | +1.877.323.4171

ATTORNEY ADVERTISING. Results depend on a number of factors unique to each matter. Prior results do not guarantee a similar outcome.

© 2014 Pillsbury Winthrop Shaw Pittman LLP. All rights reserved.

The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates.

This article is for general information purposes and is not intended to be and should not be taken as legal advice.

Pillsbury Winthrop Shaw Pittman LLP

Intellectual Property Redskins Ruling is Consistent with TTAB Precedent

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