In a precedential opinion, the Trademark Trial and Appeal Board (the “TTAB”) today ruled that the petitioners inBlackhorse v. Pro-Football, Inc.established by a preponderance of the evidence that the term “redskins” is disparaging to Native Americans and cancelled six registered trademarks owned by the Washington Redskinsfootball team.
The TTAB’s 2–1 decision is based on Section 2(a) of the Lanham Act, which bars registration of marks that disparage persons or bring them into contempt or disrepute. For the Redskins’ marks to meet Section 2(a)’s standard, the TTAB noted that “a substantial composite, which need not be a majority, of Native Americans” must have found the term “redskins” disparaging at the time the marks were registered.
To support its ruling, the TTAB first examined dictionaries published between 1967 and 1992 (the period of time over which the six marks in question were registered) for definitions of “redskins.” These each defined the term as an “offensive, disparaging, [and] contemptuous” slur against Native Americans.
The TTAB also relied heavily on a 1993 resolution of the National Congress of American Indians, the country’s oldest and largest Native American organization, which reflected Native Americans’ past views of the term as a racial slur. Based on this resolution, the Board concluded that the word “redskins” was, “at a minimum,” disparaging to roughly thirty percent of Native Americans when the respective marks were registered, and that thirty percent constitutes a “substantial composite” of the relevant population.
Today’s decision follows years of legal battles regarding the same six Washington Redskins’ trademarks. In 1999, in Harjo v. Pro-Football, Inc., the TTAB also held these marks to be disparaging under Section 2(a). The team and the NFL appealed the ruling to the U.S. District Court for the District of Columbia, which in 2003 overruled the TTAB, stating that there was insufficient evidence of disparagement. The U.S. Court of Appeals for the District of Columbia Circuit affirmed the district court’s ruling in 2005 based on the equitable defense of laches.
In today’s decision, however, the TTAB ruled the laches defense inapplicable based largely on the relative youth of this group of petitioners compared to the petitioners inHarjo. Several Blackhorse petitioners had just turned eighteen, the age of majority necessary for standing in such a proceeding, when the petition was filed, and thus could not be found to have delayed asserting their rights for a sufficient amount of time to establish a laches defense.
The lone dissenting administrative judge disputed the cancellation, arguing that the petitioners provided little additional evidence other than what was submitted in Harjo, and that such evidence was inconclusive and insufficient to establish that the marks were disparaging at the time they were registered. The dissent also emphasized that this case was “not about the controversy, currently playing out in the media, over whether the term ‘redskins’ … is disparaging to Native Americans today.”
As the dissent suggests, and as we have covered in the past on Trending Trademarks, in recent years the controversy surrounding the Redskins’ name has notoriously played out in the public eye. The team’s owner, Daniel Snyder, has repeatedly deflected arguments that the name is offensive, famously telling USA TODAY, “We’ll never change the name. It’s that simple. NEVER—you can use caps.” Meanwhile, pressure has mounted from civil rights leaders, fifty U.S. Senators, and even President Obama to urge Snyder and the NFL to rename its Washington franchise.
Importantly, the TTAB’s ruling does not bar the team or the NFL from continuing to use the Redskins name. It could, however, affect the team’s ability to fully monetize its brand through merchandising because it forecloses certain benefits of federal trademark registration that could help the team defend its marks against unauthorized use. These benefits include the presumption of validity at trial and the ability to enlist the help of the U.S. Customs and Border Protection Service to combat the importation of infringing, counterfeit goods. As a result of the TTAB’s opinion, in a press release the team has already indicated that it plans to appeal in federal court.
The case is Blackhorse v. Pro-Football, Inc., No. 92046185 (T.T.A.B. June 18, 2014).