On June 18, 2014, a divided panel of the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB”) ordered cancellation of six of the Washington Redskins’ trademark registrations holding that “Redskins” was a disparaging term when those registrations issued between 1967 and 1990. The registrations will remain in force pending the football team’s planned appeal.
As the TTAB majority made clear, the decision affects only the right to register, but not the right to use the REDSKINS marks. The Redskins have already announced that they will continue to use the name. Even without registrations, the team owns “common law” trademark rights and can still attempt to enforce its rights through federal law under Section 43(a) of the Trademark (Lanham) Act, so there is still a sufficient basis on which to make an infringement claim. Nonetheless, if the registrations are ultimately cancelled, certain of the team’s future trademark enforcement efforts could be hampered. While the immediate impact of the decision is minimal, the 81-page decision in Blackhorse v. Pro-Football, Inc. is a significant development in what has thus far been a 22 year battle.
Section 2(a) of the U.S. Trademark Act prohibits registration of marks that may disparage persons or bring them into contempt, ridicule or disrepute. Relying on Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 68 USPQ2d 1225, 1247 (D.D.C. 2003), the TTAB held that a challenge to a registration on this ground requires that a “substantial composite” of the affected group found the term disparaging or offensive at the time the registrations issued.
In 1992, a group of Native American petitioners filed a petition to cancel the six registrations containing or comprising the term REDSKINS1 under Section 2(a). In 1999, the TTAB held, as it did yesterday, that the marks were disparaging to Native Americans and ordered cancellation of the registrations. On appeal, the U.S. District Court in Washington, D.C. held that the evidence was insufficient to support a finding of disparagement, and also dismissed the claim on the ground that petitioners had waited too long to bring it. Ultimately, the Court of Appeals for the D.C. Circuit affirmed the dismissal solely on the delay issue, and did not reach the question of whether the evidence of disparagement was sufficient.
In 2006, a new group of petitioners filed a new petition for cancellation. This is the case that was decided yesterday.
Both parties submitted testimony from experts on linguistics, who debated the extent to which dictionaries between 1967 and 1990 had identified “redskin” as a derogatory term. While the majority found that there was some evidence to that effect, it did not rely heavily on either the experts’ testimony or the dictionary evidence.
The majority’s decision was based primarily on activities by the National Congress of American Indians (“NCAI”), an organization that represents approximately 150 tribes across the United States. In 1972, NCAI’s president met with Edward Bennett Williams, then the owner of the football team, and asked that the name of the team be changed because it was offensive. NCAI also lodged protests in 1988 and 1992. In 1993, after the first cancellation action was filed, NCAI’s Executive Council passed a resolution declaring that the term “Redskins” had always been, and continued to be, a pejorative, derogatory and offensive designation. NCAI’s Executive Director testified that the organization represented approximately 30% of Native Americans during the relevant time period.
Based primarily on this evidence, the TTAB found that “at a minimum, approximately thirty percent of Native Americans…found the term REDSKINS to be disparaging at all times including 1967, 1972, 1974, 1978 and 1990.” Thirty percent, said the Board, is “without doubt a substantial composite. To determine otherwise means it is acceptable to subject to disparagement 1 out of every 3 individuals.”
The football team submitted evidence that many in the Native American community did not find the term “Redskins” to be disparaging. But the majority opinion held that this does not negate the opinions of those who did, stating: “once a substantial composite has been found, the mere existence of differing opinions cannot change the conclusion.”
The dissenting member, after carefully noting that the case was not about whether the term “redskins” is disparaging to Native Americans today, found that the petitioners had failed to provide sufficient evidence to show that the term was deemed disparaging by a substantial composite of the community during the relevant period. Specifically, he found that the dictionary evidence was inconclusive and that there was no reliable evidence to corroborate the membership of the NCAI during the relevant period.
If the registrations ultimately were cancelled, the team’s trademark enforcement efforts would be hampered. A federal registration is a prerequisite to obtaining enhanced remedies for counterfeiting. It is also required in order to record trademark rights with U.S. Customs, which assists in impeding the importation of infringing goods. Registrations are also important in challenging infringing uses in social media like Facebook and Twitter, and to challenge registrations of infringing domain names. Further, without a registration, the team could not use the familiar trademark registration notice symbol ®. Thus despite the team’s available legal remedies under other state and federal laws, in view of the potential perception that the team had lost all of its trademark rights, it is possible that infringing goods would proliferate and licensing revenues could be affected.
Any final outcome is likely years away, however. If, as they did in the previous case, the Redskins choose to appeal to the U.S. District Court instead of the Federal Circuit, both parties will be allowed to submit additional evidence at trial. The Redskins will no doubt also press the defense on which the TTAB’s earlier similar decision was ultimately reversed; namely the effects of the delay in seeking relief (including the loss of evidence of public opinion in the 1960s, when the first of the marks was registered) makes it unfair to the Redskins to try to resolve these issues now. The losing party will then be entitled to appeal that decision to the U.S. Court of Appeals. Whether the subsequent decisions have an effect on the football team’s intention to continue using the REDSKINS nickname remains to be seen. Public opinion now, rather than any legal arguments, may in the end play a greater role in resolving this dispute.
NORMAN J. RICH