The R-Word, Postponing the Inevitable

by Winthrop & Weinstine, P.A.
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As many anxiously await the Trademark Trial and Appeal Board’s (TTAB) decision in Blackhorse v. Pro Football, Inc., a trademark cancellation action seeking to revoke six federal service mark registrations containing the R-Word (issued between 1967 and 1990), the pressure is mounting for the NFL team located near our Nation’s Capital to stop postponing the inevitable: A name change.

Change would be good. It is worth noting the team has enjoyed only six winning seasons since the original trademark challenge on disparagement grounds was filed more than twenty years ago, on September 10, 1992, in Harjo v. Pro Football, Inc.

Although he has vowed otherwise, more and more are realizing the time is long overdue for the current owner of the Washington Redskins to engage a naming firm and creative design team to retire the racial slur and craft a new name and visual identity for the football club. In addition to the mountain of evidence before the TTAB demonstrating the offensiveness of the name, earlier this year ten members of Congress introduced legislation and called for a name change, as did the Oneida Indian Nation, and several prominent writers will no longer use the term when reporting about the team.

Most recently, President Obama weighed in on the issue last Friday, indicating if he owned the team, he’d “think about changing the name,” since the name offends “a sizable group of people.”

The Blackhorse decision could be rendered any day, week, or month now, as oral argument at the final hearing was completed on March 7, 2103, more than 8 months ago. Bloomberg recently posted the video of an informative interview with counsel for the Native American petitioners, explaining the details of what is at issue in the case.

What has not gotten any attention — that I’ve seen anyway – is the quiet behind the scenes activity at the USPTO, demonstrating the USPTO’s consistent (and in my view, correct) position that the term REDSKIN (in singular or plural form) is not suitable subject matter for federal registration as it “may disparage Native American persons” in violation of Section 2(a) of the Lanham Act, as illustrated by this excerpt from a 2011 registration refusal of the term in connection with computer software:

“The  attached dictionary evidence shows that “REDSKIN” is a disparaging slang term  for a Native American.  The American Heritage® Dictionary of the English  Language (2009) defines “REDSKIN” as “offensive slang” that is “used as a  disparaging term for a Native American”; Webster’s  New World College Dictionary (4th ed. 2010) defines “REDSKIN” as  “an American Indian: now considered by many to be an offensive term”  (see attachments from http://education.yahoo.com/reference/dictionary/entry/redskin and http://www.yourdictionary.com/redskin).”

The only exceptions made to this rule understandably have been when the context of the use relates to peanuts, potatoes, or beans – not Native Americans or Native American imagery.

Indeed, every one of the Washington football team’s applications (containing the R-Word) filed since the original challenge in 1992 have been refused on the same disparagement ground, and the team either has elected to voluntarily drop them or have them suspended pending a final outcome in the pending cancellation action.

For example, back in August 1992, about a month before I filed the original Petition to Cancel in the Harjo case, contesting all of the team’s then-existing federal registrations for marks containing the racial slur, the team filed a new application to cover goods as opposed to services, for the first time. It sought registration of WASHINGTON REDSKINS for all kinds of clothing in Int’l Class 25 and “trading cards, posters, magazines and books regarding football, postcards, calendars, wrapping paper, paper gift boxes, paper stickers, paper napkins, paper towels, posterbooks, notepads, paper hats and greeting cards” in Int’l Class 16.

Then, in August 1999, the team filed an application to register the REDSKINS BROADCAST NEWORK logo for “production and broadcast of radio and television sports and human interest programs.” Both of these applications were refused registration under Section 2(a), both had a Letter of Protest granted with nearly 500 pages of evidence showing the offensiveness of the term, yet both were suspended under Harjo and remain suspended pending the outcome in Blackhorse.

Even the NFL’s application to federally-register a vintage Boston Redskins logo suffered the same refusal, but the application remains suspended pending a final outcome in Blackhorse. And, as was the case in the two team applications referenced above, a successful Letter of Protest also was granted back in 2010, as to the Boston Redskins logo, providing over 500 pages of evidence as to the disparaging nature of the R-Word.

So, if the Examining Corps at the USPTO already has made up its mind on the issue, you might ask, why have those refused applications been allowed suspension for years pending a final outcome in the Harjo and Blackhorse cancellation proceedings? After all, the Blackhorse cancellation proceeding will answer the question of whether the evidence shows that the team’s marks containing the R-Word were in violation of Section 2(a) at the times of their registration — between 1967 and 1990.

To the extent the NFL and the Washington Redskins football club believe that “kicking the can down the road” — on the initially refused but pending and suspended applications – was or is a good strategy, the growing support for a name change would seem to indicate otherwise. Even in the unlikely event the TTAB declines to order cancellation of the registrations containing the R-Word, and all appeals are exhausted leaving the same result, such a result would not preclude the USPTO from finding the R-Word inappropriate for federal registration today and tomorrow, and the next day.

And, in the unlikely event the USPTO were to be somehow persuaded by the team or the NFL to eventually publish those marks for opposition, they certainly would be opposed, and those opposition proceedings would not require any historical evidence (e.g., in the 1967 – 1990 time frame), because the issue would be: Do the marks consist of or comprise matter that may disparage Native American persons? Now, not then.

So, where do you come down on this issue?

Do you have any creative naming ideas for the team’s inevitable name change?

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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