United States: USPTO Cancels REDSKINS Trademark

Last Updated: August 5 2014
Article by Janet F. Satterthwaite

The US Patent and Trademark Office found that the REDSKINS trade mark for Washington DC's American football team was disparaging to Native Americans. Janet Satterthwaite reports.

American football is big over here, culturally and financially. The Washington DC franchise is called the Redskins, and the mascot is an Indian chief. Many say that in a city often divided by politics, race and class, this hugely popular football team is the glue that binds our society. There are other older sports franchises with similar names, such as Baseball's Cleveland Indians and Atlanta Braves, but as REDSKINS is a disparaging term for Native Americans, it is one of the most controversial.

A recent decision of the Trademark Trial and Appeal Board of the USPTO to cancel all the team's trade mark registrations containing the word REDSKINS because they are disparaging to Native Americans has gone viral. As you can imagine, most press reports are wildly inaccurate as to the implications of this ruling, but it is big news (Amanda Blackhorse et al v Pro Football, Inc, Cancellation No 92046185 (June 18 2014)).

Section 2(a) of the Lanham Act

Section 2(a) of the Lanham Act prohibits the registration of a mark that "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 in to contempt, or disrepute..." (15 USC Section 1052(a)).

This case dates in some ways to the early 1990s, when a similar case was brought as a cancellation action at the USPTO by some Native Americans. The USPTO cancelled the registrations in that case as well, but the case was overturned on appeal. Normally an appeal is taken to the Court of Appeals for the Federal Circuit. Courts of appeals are deferential to findings of fact below.

But a cancellation or opposition can also be "appealed" by demanding a new trial in a federal district court. The League opted for a new trial in the District Court for the District of Colombia, which found that there was laches (delay) in bringing the case, and that there was not enough evidence to support a finding of disparagement.

On appeal, the case was eventually decided by the DC Circuit Court of Appeals on the issue of laches only. In 2006, another case, with younger plaintiffs who would not be barred by laches because they had not been able to file a case before they turned 18, was brought. The parties agreed to rely on the evidence from the original case. The Board has once again ruled to cancel the registrations, albeit in a split 2-1 decision.

The standard, according to the Board, is whether the marks were disparaging to a "substantial composite" of Native Americans at the time the marks registered, which was mostly in the 1960s and 1970s. As such the relevant evidence is quite old.

The Board was critical of the paths the case took in the federal courts. For example, the Federal Court in the first case had said it was inappropriate to use trade mark law to achieve social goals. In the recent opinion, the Board noted that social goals was the exact purpose of Section 2(a). In a nearly 100-page opinion, which came out well over a year after the case was argued, the Board said that laches does not apply to a case of disparagement against a group, only a few of whose members are parties to the case.

Noting that laches is an equitable defence, the Board said: "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 'unreasonably delayed' in filing a petition to cancel." The Board further noted that laches should not apply in a matter of public policy.

Although the Court of Appeal for the DC Circuit nevertheless applied laches in the first case, the Board notes that this court is no longer in control. A side effect of the America Invents Act of 2011, which pertains mainly to patent reform, is that these cases now go to a different set of federal courts, located in Virginia, which is the location of the USPTO. The majority of the Board reasoned that the new Circuit's past trade mark opinions indicated that it was more likely to refuse to apply laches on a matter of public interest, such as confusion of the public.

The evidence

The most important among the reams of evidence was the position of the National Congress of American Indians (NCAI) a group purporting to represent the Native American community. The dissenting Board member did not believe that there was sufficient evidence in the record as to what proportion of the Native American population in the 1960-1970 time frame was represented by the NCAI, and noted generally that if the evidence was the same as that rejected by the District Court in the first case, it was presumably also insufficient this time.

Oddly enough, there are number of Native-American high schools that have "Redskins" as their own mascots. The dissenting Board member took note of some of these. Indeed, when this case was filed in its initial iteration in the early 1990s, I was surprised at the time, while driving across the vast Navajo Nation reservation, which is about the same size as the Republic of Ireland, but has only 250,000 residents, to come across a remote, lonely high school with a sign that said something like "Welcome to Red Mesa School District. Home of the redskins".

A check online revels that the school retains this name and mascot to this day. The dissent referred to it among many others in reasoning that as used in a sporting context, the term was not disparaging to a number of Native Americans in the relevant timeframe.

Case is largely symbolic

The registrations remain in force, and will not be cancelled until all the appeals are over. The Board has the authority only to cancel the registrations, not to dictate whether the league can still use the name. The US strongly recognises common-law rights, and these marks will still be famous and commercially viable, even if the case is ultimately upheld on appeal years hence.

Nevertheless, sloppy reporting by the lay press has resulted in wild speculation that anyone can now make counterfeit REDSKINS goods, that the team must change its name, and so forth.

There is no private cause of action based on Section 2(a), so there is no avenue to sue the league to enjoin use of the REDSKINS marks based on general disparagement. As such this case is largely symbolic, regardless of who ultimately wins the case.

The cancellation decision comes during a time of other public pressure to change the name of the team. The IP Outer Borders Team is studying generally the hot topic of indigenous rights and trade marks.

Originally published in the July 2014 edition of HouseMARQUES, the journal of the European Property Owner's Association.

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.

In association with
Related Video
Up-coming Events Search
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.