On June 18, 2014, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office ("TTAB") cancelled six trademark registrations owned on behalf of the Washington Redskins football team covering the term REDSKINS, on the basis of disparagement. The TTAB's decision, Blackhorse v. Pro-Football, Inc., No. 92046185 (T.T.A.B. June 18, 2014), comes over 20 years after the first petition to cancel these trademarks was filed. As with any TTAB decision, the remedy in Blackhorse is limited to cancellation of the challenged registrations, and does not enjoin the Washington Redskins from using the REDSKINS marks in connection with football.
Section 2(a) of the Lanham Act prohibits registration of marks that "may disparage" persons, institutions, beliefs or national symbols "or bring them into contempt or disrepute." 15 USC §1052. The fact that a trademark owner has good intentions underlying its use of a term does not obviate the finding that such term is deemed disparaging by the referenced group. Trademark Manual of Examining Procedure §1203.03(b)(i). By way of example, the TTAB has refused registration of the marks KHORAN for wines, HEEB for clothing and entertainment, and SQUAW for clothing and retail store services, based on determinations that these marks, as used in connection with their applied-for goods/services, are disparaging. In re Lebanese Arak Corp., 94 USPQ2d 1215 (TTAB 2010); In re Heeb Media LLC, 89 USPQ2d 1071 (TTAB 2008); In re Squaw Valley Dev. Co., 80 USPQ2d 1264 (TTAB 2006). A party has standing to file a petition for cancellation based on disparagement if that person has a "real interest" in the action - that is, a "legitimate personal interest" in the cancellation.
Here, the TTAB stated that determination of a disparagement claim requires a two-step analysis: (1) 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?; and (2) is the meaning of the marks one that may disparage Native Americans? As for the first prong, the TTAB found that the term REDSKINS in the football team's marks retains the meaning of "Native Americans" as used in connection with football and entertainment services. The TTAB noted that Native American imagery had appeared prominently in connection with the team's services, including on the helmets of the team's uniforms, as incorporated into the costumes of the team's marching band and cheerleaders, and on the annual Washington Redskins press guides. Accordingly, the football team "has made continuous efforts to associate its football services with Native American imagery."
As for the second prong, the TTAB noted that the appropriate analysis focuses on "whether a substantial composite of the referenced group" found REDSKINS to be a disparaging term in the context of respondent's services during the time period 1967-1990, i.e. the dates that the registrations issued. To assist in its determination, the TTAB reviewed evidence submitted by the Native American petitioners, including the testimony of linguistic experts on the derivation of the word "redskins", historical use of the term in various media, depositions and letters of protests from a number of Native Americans, and a resolution passed in 1993 by the Executive Council of the National Congress of American Indians that stated its offense to the term "redskin" and the REDSKINS trademarks. On behalf of the football team, the TTAB considered evidence including letters of support written by Native American tribal leaders, evidence that a number of Native Americans use the word "Redskins" as the name of their own sports teams, and the fact that the football team’s seventeenth draft pick in 1956 was Eagle Day, a member of the Cherokee tribe. Weighing all evidence, the TTAB found that, during the relevant time period, at a minimum thirty percent (30%) of Native Americans found the term REDSKINS to be disparaging when used as the name of a football team, which constitutes "a substantial composite of the referenced group." Accordingly, the TTAB concluded that the REDSKINS registrations must be cancelled.
The TTAB rejected the football team’s defense based on laches (i.e., that the claims were barred because too long had passed before the petitions were filed), holding that "laches does not apply to a disparagement claim where the disparagement pertains to a group of which the individual plaintiff or plaintiffs simply comprise one or more members." The TTAB also held that the laches defense does not apply here due to the "overriding public interest" in removing these disparaging marks from the trademark register.
As noted above, the TTAB's remedy is limited to cancellation of the registrations at issue, and does not enjoin use of the marks in commerce. Consequently, the team is not required to stop using the term REDSKINS as a result of the Blackhorse decision. Nonetheless, the team's ability to enforce its marks against infringers may be curtailed, particularly because a federal registration is a prerequisite to a federal action for trademark infringement.
The Washington Redskins are likely to appeal the TTAB's decision, which could take several years, during which time the registrations at issue would be deemed valid. In sum, while points were scored by the Blackhorse challenge this round, the game is likely far from over.