The Trademark Trial and Appeal Board (the TTAB, or the Board) has cancelled six of the Washington Redskins' trademark registrations for the team's name. Blackhorse et al. v. Pro-Football, Inc., Cancellation No. 92/046,185. The 177-page cancellation decision, issued June 18, 2014, is based on a ruling that the "Redskins" marks disparage persons or bring them into disrepute within the meaning of Section 2(a) of the federal trademark statute, the Lanham Act, 15 U.S.C. §1052(a).
Five Native Americans filed the Redskins case. It is the second of two skirmishes between Native Americans and the Redskins team, which is owned by Mr. Daniel Snyder. The first case, brought a dozen years ago by seven Native Americans, also relied on Section 2(a) of the Lanham Act. It involved seven years of litigation and appeals to the U.S. District Court for the District of Columbia and the U.S. Court of Appeals for the D.C. Circuit. Ultimately, Mr. Snyder's Redskins team prevailed on technical grounds - the D.C. Circuit found that the case was barred by laches. Thus, the courts did not reach the petitioners' disparagement claim.
The new decision, by a divided tribunal, delves into the disparagement claim. In conducting a two-part inquiry, the Board asks:
- What is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations?
- Is the meaning of the marks [at the time of the registrations] one that may disparage Native Americans?
This inquiry ran not only to the team name but to the familiar imagery of the Native American in profile that the players sport on their helmets.
As to the first question, the majority concluded that the team "has made continuous efforts to associate its football services with Native American imagery." Id. at 19. In answering the second, the Board examined a wealth of evidence submitted by the parties, from expert testimony, to dictionary definitions. Among other things, the majority found a "clear trend beginning in 1966 to label ['redskin'] as offensive and by 1986 the dictionaries are unanimous." Id. at 33. The Board also cited a resolution by the National Congress of American Indians (the largest intertribal organization in the country) supporting cancellation of the registrations, and calling the term "Redskins" "pejorative" and "derogatory." Ultimately, the TTAB concluded: "petitioners have shown by a preponderance of the evidence that a substantial composite of Native Americans found the term "Redskins" to be disparaging in connection with respondent's services during the relevant time frame of 1967-1990." Id. at 72.
The Board rejected the team's contention that "Redskins" has a separate, innocuous meaning signifying the football team. The majority stated: "Respondent's argument regarding 'secondary meaning' in the sense that it has a 'secondary or alternate meaning' denoting a football team, is not persuasive in that the 'secondary meaning' has not stripped the word 'redskins' of its 'ethnic' meaning." Id. at 68.
The dissent found the petitioners' evidence insufficient. The dissenting Judge did not definitively state that "Redskins" was not disparaging - only that he found the supporting evidence wanting:
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 petitioner's case have some semblance of meaning.
Id. at 84.
Cases such as the Redskins battles, litigated under the "disparagement" provision of the Lanham Act, are relatively rare. And, they are more typically lost than won. See, e.g., Order of the Sons of Italy in Am. v. Memphis Mafia, 52 U.S.P.Q.2d 1364 (T.T.A.B. 1999) (holding the petitioner did not carry its burden of showing disparagement where it relied exclusively on testimony from its own members);Abraham's Seed v. John One Ten, 1 U.S.P.Q.2d 1230 (T.T.A.B. 1986) (holding that petitioner lacked standing to pursue cancellation of a "sign of the fish" design mark where petitioner had only broadly alleged disparagement of beliefs professed by Christians). Where cases under this section are won, it is often because the challenged mark creates a false suggestion of association between the petitioner and the mark holder, and not because the use brings anyone into "contempt or disrepute."See, e.g., Bd. of Trustees of the Univ. of Ala. v. Bama-Werke Curt Baumann, 231 U.S.P.Q. 408 (T.T.A.B. 1986) (use of "BAMA" mark by clothing manufacturer created a false association with the University of Alabama).
The Redskins decision does not technically affect the team's right to use the monikers. The TTAB may rule on the right to register a mark, but not the right to use. Only a court may enjoin use of a trademark. Yet, the TTAB's cancellation decision, if upheld, strips the Redskins of the enhanced protection afforded by registrations with the PTO, such as a presumption that the team owns the marks and has the exclusive right to use them nationwide in the categories in which it is registered.See 15 U.S.C. §1057(b).
An appeal by the Redskins is expected. Counsel for the team, in a statement to season ticket holders, said: "This ruling - which of course we will appeal - simply addresses the team's federal trademark registrations, and the team will continue to own and be able to protect its marks without the registrations. The registrations will remain effective while the case is on appeal." Two avenues of appeal are open: to the federal district court or to the U.S. Court of Appeals for the Federal Circuit.