Redskins Loose A Battle at The Trademark Office Over The Registration of Their Name that the Office Found Disparaging to Native Americans but Are Not Ready to Raise a White Flag

We maintain two blogs: one in English (Sputnik Blog) and another in Russian (Opora Blog or Блог Опора).

Sputnik Blog – A blog about developments in legal protection of technology innovation and brand names.

Opora Blog - Blog of Russian Expats in America. We discuss business, legal and cultural events that impact our lives.

Redskins Loose A Battle at The Trademark Office Over The Registration of Their Name that the Office Found Disparaging to Native Americans but Are Not Ready to Raise a White Flag

Political correctness triumphed in America again. The U.S. Trademark Office (PTO) decided that the Washington Redskins could not keep their name and logos as federal registrations.

While the football battles were ongoing in Brazil at the World Cup, the PTO thought now is a good time to decide on an American football team’s name. On June 18, 2014, the PTO’s Trademark Trial and Appeal Board ordered, in a divided 2-to-1 decision, to cancel six of the Redskins trademark registrations on the ground that the term “Redskins” was disparaging Native Americans at the time of the registration. Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tsotigh v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014) [precedential].

In United States, like in many other countries, you cannot register a trademark if the trademark is immoral, deceptive, or scandalous, or contains a “matter may disparage or falsely suggest a connection with persons … institutions, beliefs, or national symbols, or bring them into contempt or disrepute…”

A “scandalous” bar looks to the reaction of American society as a whole, while the “disparage” language targets an identifiable group of people.

What is “scandalous” and “disparaging” changes over the years. For example, one court found the MADONNA mark in connection with wines scandalous or immoral in 1936. In 1951, the mark DOUGHBOY was found disparaging to American soldiers in connection with “a prophylactic preparation for the prevention of venereal diseases.” (For those who are not history buffs, the term “Doughboys” refers to American soldiers who fought in World War I.)

On the other hand, relatively recently, in 2006, the PTO held that the term SQUAW when used with ski-related goods means only the geographic location Squaw Valley ski resort and is not disparaging.

The test for disparagement involves a two-part analysis: (1) what is the meaning of the term in question as it appears in the mark and as the mark is used in connection with the identified goods and services?; (2) does the meaning of the mark disparage Native Americans? The view of the referenced group are determined by the views of a “substantial composite thereof,” and that substantial composite need not be a majority.

The dictionaries defined the term SQUAW as “often held to be offensive.” The Board noted that the term did not retain the meaning “Native American woman” under the applicable test, and, as such is not disparaging. In re Squaw Valley Dev. Co., 80 USPQ2d 1264, 1267 (TTAB 2006).

You would think the same logic should apply in the Redskins case, but it did not….

Petitioners in the Redskins case challenged the Redskins trademark registrations solely on the disparaging ground, not on scandalous or immoral ground. Thus, what matters is what Native Americans think. It does not matter what most Americans think of the term “Redskins,” whether or not it is a racial slur, as some argue. Of course, the challenge—faced by the PTO or any fact finder—is to establish what Native Americans think, given that the group can no longer be easily-identified, let alone properly surveyed.

The two-part analysis, as in the SQUAW case, should be used with regard to each mark of the six challenged REDSKINS marks, as of the date of registration of the mark. Here, the relevant period is 1967- 1990. Thus, it was a challenge to the Board to determine whether the mark was disparaging to Native Americans more than 25 years ago.

The legal objection to “Redskins” as a name for a football team has had a long history. At the PTO level, this was a second attempt to cancel the Redskins trademark registrations. First, Suzan Shown Harjo, Mateo Romero and other Native Americans (seven in total) filed their petition in 1992. In 1999, the PTO’s Board granted the cancellation petition in Harjo v. Pro-Football, Inc., 50 USPQ2d 1705 (TTAB 1999), finding that the marks “may be disparaging of Native Americans to a substantial composite of this group of people,” and “may bring Native Americans into contempt or disrepute" in violation of the Trademark Act.

In 2003, the District Court for the District of Columbia reversed the Board’s cancellation. The Court found that the Board’s decision was not supported by substantial evidence, was “logically flawed” and failed to apply the correct legal standard. In particular, the Court held that the petitioners failed to present sufficient evidence that a substantial composite of Native American Indians regarded the term “Redskins” as disparaging when used in the context of a football team trademark. The Court apparently was convinced by an argument that “redskins” was chosen as the name of a team in an often rough contact sport to evoke the courage, pride, and brave qualities associated with Native Americans.

In addition, a separate basis for the decision in favor of the football club owners was a laches defense: the petitioners knowingly delayed for as long as 25 years from the date the first registration was issued causing economic prejudice to the football club owners (who invested money, time and energy to build the brand.) Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 68 USPQ2d 1225, 1263 (D.D.C. 2003).

On May 15, 2009, the U.S. Court of Appeals for the District of Columbia Circuit affirmed the ruling of the U.S. District Court for the District of Columbia that laches barred the attempt of Native American Mateo Romero to cancel six registrations for the mark REDSKINS (or variations thereof) owned by the Washington Redskins for football entertainment services. Pro-Football, Inc. v. Harjo, 90 USPQ2d 1593 (D.C. Cir. 2009). However, as the Board noted in its June 18, 2014 decision, the D.C. Circuit resolved the case solely on the issue of laches, never addressing the Board’s finding of disparagement on the merits.

The 2009 Court of Appeals decision was not final. While Harjo was pending, a new crop of petitioners appeared on a scene. Six new individual petitioners filed a petition to cancel the registrations for the REDSKINS marks. Amanda Blackhorse, a member of the Navajo Nation, as the first name on the cancellation petition gave the title to that case.

However, the new case was not at all new. At the outset, the parties agreed, with certain exceptions, that the entire Harjo record may be submitted into evidence. The parties only reserved the right to make objections based on relevance to evidence earlier admitted into the Harjo record. The Harjo record included copies of newspaper articles, publications, resolutions, letters, and other printed materials originally submitted and considered in the Harjo proceeding which are dated, published or otherwise were disseminated prior to 1993. The record also included a 1993 Resolution of the National Congress of American Indians (NCAI), which asked the PTO to cancel the registrations.

The football club owners attacked the 1993 NCAI resolution and other petitioners’ documents on many grounds including that they did not represent the views of most or substantial composite of Native Americans. However, the PTO Board found that

The record establishes 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 1967, 1972, 1974, 1978 and 1990. Section 2(a) [of the U.S. Trademark Act] 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.
The PTO Board rejected the football club’s argument that the name “Redskins” took on a secondary meaning and now is used primarily as a name of the team, not as a racial “reference.” The Board was not impressed with other evidence submitted by the football club, namely letters from Native Americans in support of the club.

On the laches defense, the PTO similarly sided with the petitioners. The Board noted that laches 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. The Board stated:

[L]aches is an equitable defense. It is difficult to justify a balancing of equities where a registrant’s financial interest is weighed against human dignity. To apply laches to this type of claim contemplates the retention on the register of a mark determined by the Board to be a racial slur, in blatant violation of the Trademark Act’s prohibition against registration of such matter, merely because an individual plaintiff “unreasonably delayed” in filing a petition to cancel….

In this case, it cannot be disputed that there exists a broader public interest than that of the individual petitioners in preventing respondent from receiving the benefits of registration because respondent’s marks may have disparaged a substantial composite of Native Americans at the time. The fact that this claim falls within the category of claims that pertain to a broader public interest is made clear by the elements of the claim that plaintiffs must prove, i.e., that a substantial composite of the referenced group find the term to be disparaging. Thus, there is an overriding public interest in removing from the register marks that are disparaging to a segment of the population beyond the individual petitioners. (citations omitted)
In dissent, Judge Bergsman forcefully argued that petitioners’ evidence failed to show that the term “Redskins” was disparaging at the time of the subject registrations. He pointed to a lack of evidence that the term is disparaging specifically when used in connection with football-related services. In particular, he noted that there were only two dictionary definition excerpts that defined the term “redskins” as “often offensive.” “Often” means that it is not always offensive, thus leaving open the possibility that “Redskins” is not considered offensive when used in connection with the name of a football team. Nevertheless, over the powerful dissent of Judge Bergsman, the two other Board judges ruled in favor of the cancellation petitioners.

Some commentators argue that the PTO’s decision is politically motivated. Why would you revisit the same legal issue after the courts already ruled on it?! Why the whitemen decided now the same issue? (Some joke that the PTO’s decision could have been the other way had the Washington Redskins played better in the last 10-20 years and at least had made it to the Super bowl.)

The critics of the Board’s decision have a point. Unlike district court justices who are elected, PTO’s judges are appointed by the government. Can one say for certain that the judges were not pressured (at least on a subconscious level), when two top leaders of current governing party publicly expressed their opinion that the Redskins name was not politically correct and should be changed? Also, can we say the judges managed to put aside their own personal perceptions of the term “redskins” and decided solely based on the record and the current law and precedent including highly relevant SQUAW case?

So, the Redskins owners lost the battle at the Trademark Office, but they surely have not lost the war yet. As with the first PTO’s decision in 1999, they will almost certainly appeal it to a district court. It is not clear how the Court will rule, given the prior litigation history.

Importantly, the PTO’s decision to cancel the trademark registrations does not mean that the team actually has to change the name now. At the very beginning of its nearly 100-page opinion, the Board was careful enough to state: “[t]his decision concerns only the statutory right to registration…. We lack statutory authority to issue rulings concerning the right to use trademarks.”

In the U.S., trademark rights are based on actual use of the mark, not on a governmental decision to register the mark. (To be sure, registration grants valuable rights and presumptions. One of such rights includes the right to record the registration with Customs to be able to stop counterfeits at the border.)

Thus, the Redskins club owners can and undoubtedly will continue to use the name and its logos, including receiving royalties from licensing of various Redskins-sponsored merchandise. What happens at the likely appeal is something to watch.

Text © Maxim A. Voltchenko 2014

* This piece is not intended to be a sports or legal review. This posting may not necessarily represent the views of the author’s employing law firm. Although every effort has been made to verify the accuracy of items in this Blog, readers are urged to check independently on matters of specific concern or interest.