In a precedential decision issued June 18, 2014, the Trademark Trial and Appeal Board (“the Board”) held all six trademark registrations owned by the Washington Redskins which include the term REDSKINS “must be cancelled because they were disparaging to Native Americans at the respective times they were registered, in violation of Section 2(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a).” Blackhorse v. Pro-Football, Inc., T.T.A.B., No. 92046185, 6/18/14.
At least two times in the decision, the Board expressly stated it only has jurisdiction over registration of trademarks and its ruling would not prevent the team from using the REDSKINS mark in the future. As a practical matter, however, cancellation of the registrations will take away the presumptions of ownership and validity accorded by federal registration, hamper the team’s ability to prevent the importation of counterfeit merchandise, and force the team to rely on its state and common-law rights in the mark, which often are difficult and, if nothing else, expensive to prove in court. In addition, the team no longer will be able to bring federal actions for trademark infringement, though it can still file claims for unfair completion under Section 43(a) of the Federal Trademark Act.
The decision in Blackhorse is the second time the Board has found the REDSKINS mark offensive under Section 2(a) of the Federal Trademark Act, which expressly prohibits the registration of any trademark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The Board’s first ruling was in 1999 when it determined that REDSKINS might disparage Native Americans as perceived by a substantial composite of Native Americans. See Harjo v. Pro-Football Inc., 50 U.S.P.Q.2d 1705 (T.T.A.B. 1999). Harjo was subsequently overturned by the U.S. Court of Appeals for the District of Columbia on the basis of laches claiming that the plaintiffs should have filed their complaint soon after the Redskins registered their nickname in 1967. As a result, the appellate court never analyzed the merits of the Petitioner’s claims. This case was launched in 2006 by a younger group of Native Americans to avoid the laches defense.
In Blackhorse, the Board determined petitioners met their burden of showing that a substantial composite of the relevant population (only Native Americans) considered the term offensive at the time it was registered. The evidence relied upon by the Board included dictionary definitions, testimony from Native Americans, and media coverage, all of which proved the term offensive, disparaging, and contemptuous as of the 1967 registration date. After finding Petitioners met their burden, the Board concluded it was immaterial that some Native American groups did not find the terms offensive.
The Board’s decision in favor of cancellation was 2 – 1. The dissent was written by Judge Marc A. Bergsman who stated that while he was not suggesting the term REDSKINS was NOT disparaging at the time the marks were registered, his conclusion was the evidence put forth by petitioners had failed to show it was. The team has already announced it will appeal the case, according to a statement from its attorney, the registrations will not be cancelled at least until all appeals are exhausted.
Litigation over the right to register the REDSKINS name has ensued for nearly 15 years and, with the team’s announcement to appeal the decision, there likely is no hope it will end any time soon.