United States: U.S. Patent And Trademark Office Orders Cancellation Of "REDSKINS" Trademark Registrations

On June 18, 2014, a divided panel of the U.S. Patent and Trademark Office Trademark Trial and Appeal Board ("TTAB") ordered cancellation of six of the Washington Redskins' trademark registrations holding that "Redskins" was a disparaging term when those registrations issued between 1967 and 1990. The registrations will remain in force pending the football team's planned appeal.

As the TTAB majority made clear, the decision affects only the right to register, but not the right to use the REDSKINS marks. The Redskins have already announced that they will continue to use the name. Even without registrations, the team owns "common law" trademark rights and can still attempt to enforce its rights through federal law under Section 43(a) of the Trademark (Lanham) Act, so there is still a sufficient basis on which to make an infringement claim. Nonetheless, if the registrations are ultimately cancelled, certain of the team's future trademark enforcement efforts could be hampered. While the immediate impact of the decision is minimal, the 81-page decision in Blackhorse v. Pro-Football, Inc. is a significant development in what has thus far been a 22 year battle.

Section 2(a) of the U.S. Trademark Act prohibits registration of marks that may disparage persons or bring them into contempt, ridicule or disrepute. Relying on Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 68 USPQ2d 1225, 1247 (D.D.C. 2003), the TTAB held that a challenge to a registration on this ground requires that a "substantial composite" of the affected group found the term disparaging or offensive at the time the registrations issued.

In 1992, a group of Native American petitioners filed a petition to cancel the six registrations containing or comprising the term REDSKINS1 under Section 2(a). In 1999, the TTAB held, as it did yesterday, that the marks were disparaging to Native Americans and ordered cancellation of the registrations. On appeal, the U.S. District Court in Washington, D.C. held that the evidence was insufficient to support a finding of disparagement, and also dismissed the claim on the ground that petitioners had waited too long to bring it. Ultimately, the Court of Appeals for the D.C. Circuit affirmed the dismissal solely on the delay issue, and did not reach the question of whether the evidence of disparagement was sufficient.

In 2006, a new group of petitioners filed a new petition for cancellation. This is the case that was decided yesterday.

Both parties submitted testimony from experts on linguistics, who debated the extent to which dictionaries between 1967 and 1990 had identified "redskin" as a derogatory term. While the majority found that there was some evidence to that effect, it did not rely heavily on either the experts' testimony or the dictionary evidence.

The majority's decision was based primarily on activities by the National Congress of American Indians ("NCAI"), an organization that represents approximately 150 tribes across the United States. In 1972, NCAI's president met with Edward Bennett Williams, then the owner of the football team, and asked that the name of the team be changed because it was offensive. NCAI also lodged protests in 1988 and 1992. In 1993, after the first cancellation action was filed, NCAI's Executive Council passed a resolution declaring that the term "Redskins" had always been, and continued to be, a pejorative, derogatory and offensive designation. NCAI's Executive Director testified that the organization represented approximately 30% of Native Americans during the relevant time period.

Based primarily on this evidence, the TTAB found that "at a minimum, approximately thirty percent of Native Americans...found the term REDSKINS to be disparaging at all times including 1967, 1972, 1974, 1978 and 1990." Thirty percent, said the Board, is "without doubt a substantial composite. To determine otherwise means it is acceptable to subject to disparagement 1 out of every 3 individuals."

The football team submitted evidence that many in the Native American community did not find the term "Redskins" to be disparaging. But the majority opinion held that this does not negate the opinions of those who did, stating: "once a substantial composite has been found, the mere existence of differing opinions cannot change the conclusion."

The dissenting member, after carefully noting that the case was not about whether the term "redskins" is disparaging to Native Americans today, found that the petitioners had failed to provide sufficient evidence to show that the term was deemed disparaging by a substantial composite of the community during the relevant period. Specifically, he found that the dictionary evidence was inconclusive and that there was no reliable evidence to corroborate the membership of the NCAI during the relevant period.

If the registrations ultimately were cancelled, the team's trademark enforcement efforts would be hampered. A federal registration is a prerequisite to obtaining enhanced remedies for counterfeiting. It is also required in order to record trademark rights with U.S. Customs, which assists in impeding the importation of infringing goods. Registrations are also important in challenging infringing uses in social media like Facebook and Twitter, and to challenge registrations of infringing domain names. Further, without a registration, the team could not use the familiar trademark registration notice symbol ®. Thus despite the team's available legal remedies under other state and federal laws, in view of the potential perception that the team had lost all of its trademark rights, it is possible that infringing goods would proliferate and licensing revenues could be affected.

Any final outcome is likely years away, however. If, as they did in the previous case, the Redskins choose to appeal to the U.S. District Court instead of the Federal Circuit, both parties will be allowed to submit additional evidence at trial. The Redskins will no doubt also press the defense on which the TTAB's earlier similar decision was ultimately reversed; namely the effects of the delay in seeking relief (including the loss of evidence of public opinion in the 1960s, when the first of the marks was registered) makes it unfair to the Redskins to try to resolve these issues now. The losing party will then be entitled to appeal that decision to the U.S. Court of Appeals. Whether the subsequent decisions have an effect on the football team's intention to continue using the REDSKINS nickname remains to be seen. Public opinion now, rather than any legal arguments, may in the end play a greater role in resolving this dispute.

Footnote

1 The contested registrations were: (1) THE REDSKINS & Design, Reg. No. 0987127 issued in 1972; (2) THE REDSKINS (Stylized), Reg. No. 0836122 issued in 1967; (3) WASHINGTON REDSKINS & Design, Reg. No. 0986668 issued in 1974; (4) WASHINGTON REDSKINS, Reg. No. 0978824 issued in 1974; (5) REDSKINS, Reg. No. 1085092 issued in 1978; and (6) REDSKINETTES, Reg. No. 1606810 issued in 1990, all covering entertainment services such as presentations of professional football contests and/or cheerleading performances.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions