Today, in Blackhorse v. Pro-Football, Inc., the Trademark Trial and Appeal Board granted a petition to cancel six trademark registrations issued at various times from 1967 to 1990 containing the term REDSKINS for professional football-related services on the basis that the term disparages Native Americans.
Five Native Americans filed a petition to cancel the registrations, arguing that REDSKINS was disparaging of Native Americans at the times the registrations were issued. They contended that the registrations violated Section 2(a) of the Trademark Act, which prohibits the registration of trademarks that may disparage people or bring them into contempt or disrepute.
To determine disparagement, the Board asked two questions: First, what is the meaning of the mark in question as it appears in connection with the goods and services identified in the registrations? Second, is the meaning of the marks one that may disparage Native Americans? These questions are to be answered as of the respective dates of registration of each mark.
With respect to the first question, the Board found that the evidence provided by the petitioners “overwhelmingly” supported a conclusion that the registered REDSKINS marks meant “Native Americans.” In fact, two of the registrations at issue in this case included a design of a Native American man’s face as part of the marks. Moreover, the REDSKINS football team had included the same or similar depictions of Native Americans or Native American regalia such as headdresses as part of its uniforms between the 1960s and 1990s.
In deciding the second question, the Board looked to the views of “a substantial composite” of Native Americans and not Americans as a whole. A “substantial composite” may not necessarily comprise a majority of Native Americans.
To support the argument that REDSKINS was disparaging during the relevant time periods, the petitioners provided evidence analyzing the term “redskins” and demonstrating the views of Native Americans. This evidence included, among other things, dictionary definitions from as early as 1967 which specified “redskin” as an offensive term for Native Americans and testimony from linguistics experts attesting to the term’s historically offensive nature. Other evidence included resolutions from Native American advocacy groups, and letters from Native Americans to the REDSKINS football team, all claiming that REDSKINS was disparaging.
In support of maintaining its registrations, Pro-Football (the Redskins’ corporate entity) provided evidence which it contended showed that the REDSKINS mark was supported by certain Native Americans and, in any case, was not disparaging.
The Board was not persuaded by Pro-Football’s evidence, instead concluding that the record established that at least 30% of Native Americans found the term REDSKINS to be disparaging at the times that each of the six disputed trademark registrations were issued. Accordingly, the Board held that the petitioners showed “by a preponderance of the evidence that a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with [Pro-Football’s] services during the relevant time period of 1967-1990” and ordered the cancellation of the six REDSKINS trademark registrations.
Pro-Football has indicated that it will appeal this decision in federal court. During the pendency of the appeal, Pro-Football’s REDSKINS trademark registrations will remain in force.
It is important to note that the Board determines only whether a mark can be registered; not whether a mark can be used. If the Board’s decision is upheld on appeal, Pro-Football will lose the benefits conferred by the registration of its trademarks (e.g., the presumption of ownership and nationwide rights, and the right to use the ® symbol), but will not be under any obligation to cease use of its REDSKINS marks or lose any common law rights it has in such marks. Pro-Football’s common law rights may be significant given their nationwide promotion and recognition. Therefore, third parties would not be able to manufacture their own unlicensed REDSKINS merchandise or operate REDSKINS football teams without violating Pro-Football’s rights, although it might be somewhat more difficult for Pro-Football to enforce those rights without its registrations. If anything, this decision may only have the practical effect of placing additional public pressure on Pro-Football to change the name of its team.