In a landmark decision, the US Patent and Trade Marks Office Trial and Appeal Board has cancelled six of the NFL Washington Redskins’ trade marks, ruling the name was ‘disparaging to Native Americans’ at the date the applications were filed, and so should never have been registered.

Interestingly, only the Redskin name and past logos, registered between 1967 and 1990, were cancelled in today’s ruling:  the current logo was not.

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One of the six cancelled trade marks: Washington Redskins US Registration No. 986668

The original trade mark case began in 1992 (Harjo v Pro Football Inc.), with the lead petitioner Suzan Shown Harjo bringing proceedings pursuant to Section 14 of the Trademark Act of 1946, 15 U.S.C. § 1064(c), in a petition to cancel a registered mark. Other sections of the Trademark Act that ‘prohibit registration of marks that may disparage persons or bring them into contempt or disrepute’ were also raised.

§ 2 (15 U.S.C. § 1052). Trademarks registrable on the principal register; concurrent registrationNo trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter 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; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.

In 1999, the Trial and Appeals Board ruled to cancel the trademarks. The decision was later overturned on a technicality in the US District Court after the court effectively determined that the plaintiffs had acquiesced to the football teams’ activities by only raising their case so long after Redskins registered their nickname in 1967.

Harjo launched a new case in 2006, rallying a younger group of Native Americans, including the current plaintiff Amanda Blackhorse (Blackhorse v Pro Football Inc.). The case was finally heard in March 2013, with Blackhorse arguing that the Redskins should lose their Federal trade mark protection because the word ‘Redskin’ disparages native Americans under § 2 (15 U.S.C. § 1052) of the US  Trade Marks code.

During the case Jesse Witten, the plaintiffs’ lead attorney, presented a wide variety of evidence – ‘including dictionary definitions and other reference works, newspaper clippings, movie clips, scholarly articles, expert linguist testimony, and evidence of the historic opposition by Native American groups – to demonstrate that the word ‘redskin’ is an ethnic slur.’

The fallout

Redskins merchandise is a vital part of League revenue. From April 1, 2012, to March 2013, the NFL sold more jerseys of Redskins quarterback Robert Griffin III than of any other player in a single year in NFL history. The decision does not prevent the Redskins continuing to use the moniker, but does eliminate their ability to use the provisions of the Trade Marks code to stop others from using the term to associate themselves with the team. The decision potentially dilutes the NFL’s capacity to drive revenue from the team.

What happens next?

The loss of the trade mark registrations does not force the team to change their name per se although there is a groundswell of interested parties who suggest that, because of the offensive nature of the term, the team should do exactly that.

The Washington Redskins have stated that they will appeal the decision in the US District Court.

In the meantime, the Washington team retains its Federal trademark rights pending the appeal.

What’s the situation in Australia?

Under section 42, the Australian Trade Marks Act 1995 provides grounds similar to those relied upon by Blackhorse and Harjo for rejecting an Australian Trade Mark application:

Section 42  Trade mark scandalous or its use contrary to law
                          An application for the registration of a trade mark must be rejected if:
                               (a)  the trade mark contains or consists of scandalous matter; or
                              (b)  its use would be contrary to law.

To the best of the author’s knowledge, Australia does not have any current sporting teams with a moniker that associates them with a certain group’s ethnicity, and therefore the US decision does not create any precedents here as such. Associating a team with an ethnic origin has been actively discouraged in the past. In the 1990s, in the Australian National Soccer League, teams typically emerged out of ethnic social clubs and were named according to their original homeland. One infamous match in 1992 involving Preston Makedonia and Heidelberg Alexander, resulted in a crowd riot, due to a dispute (being fought in Europe) as to whether or not Greece had rights to the geographic indicator ‘Macedonia’.

Since then soccer team names have been de-ethnicised in Australia. Clubs no longer have names such as J.U.S.T (Yugoslav United Soccer Team) or West Adelaide Hellas, but instead have adopted team names based on the suburbs in which their home-ground or headquarters are situated, similar to the AFL.

Case: Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tsotigh v. Pro-Football, Inc. Cancellation No. 92046185

Cancelled Trade Marks: 
Registration #: 1606810
Registration #: 1085092
Registration #: 987127
Registration #: 986668
Registration #: 978824
Registration #: 836122