TTAB Cancels Trademark Registrations for the Washington Redskins
On June 18, 2014, the Trademarks Trial and Appeal Board handed a loss to the Washington Redskins, finding the “Redskins” mark to be disparaging to Native Americans, as defined by the Lanham Act, and thus ordered six “Redskin” trademark registrations held by Pro Football, Inc. to be cancelled. Blackhorse et al. v. Pro Football, Inc., Cancellation No. 92046185 (TTAB June 18, 2014).
The decision is another milestone in a now twenty-two-year fight to have the Washington Redskins change their name. Blackhorse has its roots in a 1992 petition by Susan Harjo and six other Native Americans to have the “Redskins” registrations canceled. The TTAB ruled in Harjo’s favor seven years later. Harjo v. Pro Football, Inc., 50 USPQ2d 1705 (TTAB 1999). The D.C. district court reversed and remanded on two bases: first, on a finding that the board’s decision lacked evidentiary support, and second, the claim ought to have been barred by laches. Through multiple rounds of remand and appeal, the first issue was never finally decided, but the laches defense was upheld, and the case finally dismissed. During the appeals process, Blackhorse was filed by six different and younger Native Americans (organized by Susan Harjo) to whom the laches defense ought not to apply. Blackhorse began in 2006, but was put on hold until Harjo was completed, with the case resuming in 2010.
The victory for Blackhorse and her co-petitioners is largely symbolic. The decision does not invalidate the Redskins’ various marks or require the team to change its name; the decision merely cancels the registration of the “Redskins” marks on the principal register. Trademarks, of course, may be validly used whether registered or not, and the TTAB has no power to stop mark-owners from using unregistered but offensive marks. Registration simply provides the mark-holder with several beneficial legal rights and presumptions, such as the right to attach the ® symbol on merchandise, presumptive ownership of the mark, and the presumption of an exclusive right to use the mark nationwide in connection with goods and services listed on the principal register. Given how long the team has held and used the various “Redskins” marks, it’s unlikely that the loss of registration will suddenly render the team unable to stop unauthorized sales of knock-off merchandise – but the efforts may now be more costly, and cheaper knock-offs may be able to carve off a bigger chunk of the Redskins’ merchandising revenues. Where political and popular pressure have failed to move team owner Dan Snyder to change the team’s name, financial pressure might prompt a shift in opinion.
The symbolic victory, however, is part of a larger effort by many organizations to stamp out offensive and derogatory terms for Native Americans, especially “redskins.” The Oneida Indian Nation has been petitioning the team and the NFL for many years to have the name changed. Congress has put pressure on the team into a name change. And in recent years the PTO has refused to register other applications for marks using “redskin” in connection with other goods or services on the basis that the term is derogatory or disparaging of Native Americans, just as the TTAB ruled in Blackhorse. The cancelation of the mark, much less a change in team name, would seem to be long overdue - which begs the question of why this particular battle has been drawn out for over two decades.
Section 2 of the Lanham Act (15 USC 1052) spells out marks that are not to be registered, among them marks that consist of matter that “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 PTO uses a two-step test in determining disparagement. The first step asks whether the mark is understood, in its context, to refer to an identifiable group of people. “In context” here refers to the use of the mark in connection with goods and services. The second step looks to whether the reference is perceived as disparaging to a substantial composite of that group. The analysis does not look at all to the mark-owner’s intent or own meaning ascribed to the term – thus, Snyder’s claim that the word is meant to honor and respect Native Americans, whether true or not, is entirely irrelevant.
As to the first step, the TTAB easily found the term “Redskins” to unequivocally refer to Native Americans, even in the context of professional football, given a) the numerous promotional materials put out by the team with pictures pairing famous Native Americans alongside team players, not to mention b) the team’s own logo, a profile picture of a Native American man, emblazoned on their helmets and merchandise.
Determining whether the reference was perceived as disparaging to a substantial composite of Native Americans, however, was not as simple. The first problem was in identifying a “substantial composite” of people that would fit the analysis. The majority of the board found that the National Congress of American Indians (NCAI), claiming to represent about a third of all American Indians, sufficiently represented a “substantial composite” of Native American people. But it is notable that the majority dedicated several pages of its opinion to supporting this conclusion. As the dissenting opinion makes clear, establishing exactly who validly speaks for the NCAI, as well as what people the organization actually represents, is a problem that plagued Harjo and was one reason the reviewing district court ruled that the Harjo board’s conclusions were unsubstantiated. Complicating the issue are the many individual Native Americans who have publicly or in testimony stated that they do not find “redskin” to be offensive, contrary to the numerous resolutions adopted by the NCAI that clearly label the term as pejorative, denigrating, and racist. To the dissent, nothing has changed since Harjo – there is still an open question as to whether “redskin” really was offensive to a “substantial composite” of Native Americans at the time the team registered its marks.
But the majority further found that the expert testimony presented by both sides pointed to one clear trend. Prior to the 1960’s, when the name “redskin” appeared in literature or journalism, the usage was almost always a pejorative racial epithet, as indicated by the context (e.g., “greasy redskins,” “dirty redskins,” etc.). About the time the team adopted its name, however, usage of “redskin” virtually vanished from the written page, mainly appearing only in connection with the football team in sports articles. Dictionaries began noting at this time that the term was “often offensive” or “derogatory,” and in the same era the NCAI issued its early resolutions stating their opposition to the term’s usage. To the majority, this clearly indicated that at the time the team registered its first “Redskin” mark, the name was already known to be offensive and racially insensitive to Native Americans, and therefore not deserving of trademark registration.
The lengths to which the majority wrote in support of these findings – along with the voluminous appendix of sources referenced that is nearly as long as the opinion itself – indicates that the majority in Blackhorse recognized the faults in the Harjo opinion and evidence. Much of the evidence presented in Blackhorse, in fact, is the same evidence submitted in Harjo, a point the dissent made numerous times. The analysis of the evidence presented in Blackhorse, however, is clearly tailored and addressed to an appellate review board to help Blackhorse escape the same fate as Harjo, and potentially put this case to rest.
Blackhorse’s biggest impact, however, may be its effect on the laches defense. Harjo ultimately fell on this affirmative defense, but not without leaving open-ended questions of its use in the context of cancelation of trademark registrations. While the board in Harjo found the defense inapplicable, the district court disagreed, ruling that the Trademark Act did not “unequivocally” bar the laches defense in cancellation proceedings. The court reiterated that the applicability of laches depends on the equities and facts of the specific case in which the defense is raised. The board in Blackhorse, taking this cue, held that laches cannot be applied to a disparagement claim in any case where the disparagement applies to one of the plaintiffs. Primarily, the board found it difficult to find any balance of equities where financial interests of a defendant were being weighed against “human dignity.” To allow the defense would mean allowing racial epithets to remain on the principal trademark registry, in “blatant violation” of the Lanham Act’s prohibitions, merely due to a plaintiff’s delay in filing a claim. The board further found it difficult to determine what prejudice, if any, Pro Football might suffer due to a delay in this situation. Second, the board noted that disparaging marks imply broader public policy issues, and that in such cases both the board and courts have routinely rejected a laches defense. In the trademark context, public policy bars the availability of a laches defense against claims of, for example, fraud, descriptiveness and genericness of a mark, trademark abandonment, and likelihood of confusion. Disparagement, the board has ruled, is as much a public policy concern as any of these other bars to a laches defense.
Whether these rulings will stand on appeal, of course, remains to be seen. It would appear the board has used Blackhorse as an opportunity to fix the shortcomings of its decision in Harjo, leaving less room for an appellate review to find reasons for reversal. While an appellate panel may still find the evidence against the use of “redskin” less than compelling, it is difficult to imagine the panel overturning the board’s reasoning for barring the laches defense in disparagement cases, especially given the board’s explicit comparison of “redskin” to other racial epithets that are widely recognized as offensive.
But even a victory for the NFL on appeal may be as symbolic as the victory for Native Americans in the board’s decision. A change in the team’s name is almost inevitable as the political pressure to do so grows. Dan Snyder will not own the team forever, and whoever takes control afterward will almost certainly make the change. The NFL itself might eventually push the team to change; given other looming problems for professional football in coming years, the NFL might find having one less controversy on its plate a welcome relief.