In the latest ruling of the long-running legal battle, the Trademark Trial and Appeal Board (TTAB) ruled that the Washington Redskins mark is “disparaging to Native Americans” and must be canceled.
Five Native American citizens brought the cancellation proceeding before the Board, arguing that six registrations for the professional football team were obtained contrary to Section 2(a) of 15 U.S.C. § 1052(a) of the Trademark Act, which prohibits marks that may disparage persons or bring them into contempt or disrepute.
The TTAB agreed that the term “Redskins” was disparaging to Native Americans at the respective times it was registered and renewed in 1964, 1967, 1974, 1978, 1990, and 2000.
The case began in 1992 when a prior group of Native Americans filed a similar petition. In that proceeding the TTAB found the marks disparaging, and ordered the registrations canceled. But the case underwent several years of appeals, bouncing between federal district and appellate courts, until the D.C. Circuit Court of Appeals ultimately held that the doctrine of laches barred the claim.
In the second attempt the TTAB reviewed the entire record from the earlier proceeding, including newspaper articles, reports, official records, letters, and statements from the petitioners and concluded that “at a minimum, approximately thirty percent of Native Americans found the term Redskins used in connection with respondent’s services to be disparaging at all times including [the years the marks were registered and renewed].”
An ethnic term in origination, the Board noted that dictionary definitions began identifying “redskin” as an offensive term in 1966 and that general use of the term showed a drop-off in usage since that time. Perhaps most importantly for the majority of the TTAB, the Executive Council of the National Congress of American Indians passed a resolution in support of cancellation of the mark in 1993 and advocated against using the term as early as the 1960s.
“Section 2(a) prohibits registration of matter that disparages a substantial composite, which need not be a majority, of the referenced group. Thirty percent is without doubt a substantial composite. To determine otherwise means it is acceptable to subject to disparagement 1 out of every 3 individuals,” the Board wrote. “There is nothing in the Trademark Act, which expressly prohibits registration of disparaging terms, or in its legislative history, to permit that level of disparagement of a group and, therefore, we find this showing of thirty percent to be more than substantial.”
The TTAB rejected the Redskins’ laches defense, finding that it “does not apply to a disparagement claim where the disparagement pertains to a group of which the individual plaintiff or plaintiffs simply comprise one or more members.”
A dissenting judge argued that the dictionary evidence was inconclusive and the 30 percent figure cited by the majority for the membership of the National Congress of American Indians was uncorroborated. Calling the petitioners’ evidence a “database dump,” the dissent suggested that the majority was distracted by current feeling about the term.
To read the TTAB’s ruling in Blackhorse v. Pro-Football, Inc., click here.
Why it matters: The TTAB’s decision garnered headlines but may have limited practical impact, at least in the near future. If upheld, the ruling could make enforcement more challenging, although the team’s common-law trademark rights can prevent others from using the mark. Daniel Snyder, the owner of the Washington Redskins, has continually refused to change the team’s name, despite the legal battle and public pressure, and has already promised to appeal. However, more broadly, the controversy over the Redskins mark highlights the problems that a brand owner may face when a mark conjures negative associations and nuances. Traditionally, much of the value of a brand lies in its “goodwill” – the positive aura of quality and competence associated with the mark. In the debate over the Redskins mark, many critics have questioned the continuing value of that mark’s goodwill.