The latest twist in the on-going legal battle over the registration of the trade mark REDSKINS in the United States has seen the United States District Court uphold the decision of the Trademark Trial and Appeal Board (TTAB) to cancel six trade mark registrations that include the word ‘REDSKIN’ on the basis that each ‘may disparage’ Native Americans.
As a brief background, the Washington Redskins is a franchise of the National Football League (NFL), one of the largest sports in the United States. The Redskins franchise has an estimated value in the region of US$2.4 billion. The franchise has been using the REDSKINS moniker for around 80 years and the trade mark registrations at issue were granted between 1967 and 1990.
Amongst the grounds of appeal pursued by the franchise was the defence of laches, in that the registrations have existed for such a long time without challenge that the circumstances surrounding the initial registrations have changed too much for it to be just to grant the cancellation of the registrations.
The Judge dismissed this ground as ‘laches does not apply because the public interest is at stake’ and there was no delay on the part of the Native Americans that brought the initial request to cancel the trade mark registartions.
Another potentially wider reaching ground was the assertion that section 2(a) of the Lanham Act (the Act that provides for the federal registration of trade marks in the United States) violates the First Amendment of the United States Constitution by ‘restricting protected speech, imposing burdens on trademark holders, and conditioning access to federal benefits on restrictions of trademark owners’ speech’.
It was, however, the Judge’s ruling that the decision to cancel disparaging trade mark registrations (as provided for by section 2(a) of the Lanham Act) was not a violation of the First Amendment and, in any event, trade mark registrations are ‘government speech’ (in so much as a trade mark registration is essentially a government seal) and is therefore exempt from the First Amendment.
Overall, the Judge handed down a summary judgement upholding the TTAB decision that the trade mark registrations should be cancelled on the grounds that they are disparaging. Such a judgment has, in effect, denied the franchise the opportunity for the matter to be heard at a full trial.
The franchise has, however, vowed to appeal the decision further and the trade mark registrations will remain in force until the franchise has exhausted all avenues of appeal. The next stop will be the US Court of Appeals – watch this space.