For the second time, the Trademark Trial and Appeal Board (the “TTAB”) of the U.S. Patent and Trademark Office (“USPTO”) has ruled that the REDSKINS trademark registrations should be cancelled because the term is disparaging to Native American Indians.
In 1999, the TTAB’s decision was overturned through appeals brought in the courts on the ground that the named petitioners unreasonably delayed in bringing their claims. This time, a new and younger, group of Native Americans filed a cancellation action. In the decision dated June 18, 2014, the TTAB determined that the laches defense did not apply to disparagement cancellation claims; and even if laches did apply the National Football League did not prove prejudicial reliance on the petitioners’ delay.
In a 2-to-1 split decision, the TTAB canceled the REDSKINS registrations largely on the basis of the same record that was before the TTAB in 1999: dictionary definitions, published writings about the REDSKINS mark during the time period the registrations were issued (1966-1990), lexicographer and linguistics expert testimony, and a 1993 resolution of a Native American Indian group (representing 30% of Native American Indian population) stating that the term was disparaging.
Not surprisingly, the National Football league has vowed to appeal the TTAB’s decision in the courts, challenging the bases for the TTAB’s disparagement findings and its ruling on laches. In addition, a constitutional challenge to the statute under which the registrations were cancelled is threatened.
There are few trademark cases that have generated the amount of publicity that resulted from the recent USPTO decision granting the petition for cancellation of the REDSKIN registrations. In addition to continued public outcry for and against the REDSKINS team name, a long battle in the courts between the Native American Indians and the National Football League is expected before the legal status of the REDSKINS registrations will be resolved.
Kathleen Cooney-Porter, the chair of Oblon Spivak’s trademark department notes that this is not just a legal or political issue, but it is also a psychological issue. “In 2005, the American Psychological Association, a long-time client of Oblon Spivak, recommended that American Indian themed mascots be discontinued because of the adverse effects,” What is most interesting is that this decision may create sufficient pressure on Pro-Football, Inc. to change the name.
Oblon partner Roberta Bren, who is known for thinking outside the box, suggests that the National Football League change the name to the SKINS and use a “pigskin” football as a mascot. Whether this would create a problem with PETA and other animal welfare organizations, is another question!