In a landmark decision by the Trademark Trial and Appeal Board, the panel cancelled six of the team’s trademarks ruling that the name is disparaging to Native Americans pursuant to Section 2(a), 15 U.S.C. § 1052(a) which prevents the registration of marks which “may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The Board’s ruling addressed six uses of the name REDSKINS during the time period of 1967 to 1990. Although the decision only addresses the statutory right to register the trademarks rather than the actual use of the trademarks, it may create serious impediments to enforcing trademark protection in a commercial context. The owner of the trademarks, Pro-Football, Inc., attempted to argue laches and lack of substantial evidence of disparagement. The Board rebuffed Pro-Football’s laches defense based primarily upon public policy issues and determined that a finding of disparagement requires a two-step inquiry from the date of registration of the involved marks:
“a. What is the meaning of the matter in question, as it appears in the marks and as those marks are used in the connection of goods and services?
b. Is the meaning of the marks one that may disparage Native Americans?”
In establishing disparagement, the Board ruled the first prong of the test met as the term REDSKINS within the registered mark [at the time of registration] did refer to Native Americans. Second, the Board found the term REDSKINS to be disparaging during the relevant time period upon reviewing evidence presented by Petitioners, including linguistic analysis of the word and views of the referenced group. Therefore, a cancellation of the trademarks was appropriate.
Amanda Blackhorse, Marcus Briggs-Cloud, Phillip Gover, Jillian Pappan and Courtney Tsotigh v. Pro-Football, Inc., Cancellation No. 92046185 (TTAB June 18, 2014) [Kuhlke (opinion), Cataldo and Bergsman]