PTO’s Decision to Cancel Football Team’s “Redskins” Marks May Provide Only a Symbolic Victory

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On June 18, 2014, the U.S. Patent and Trademark Office’s (PTO) administrative board held for the second time that six federal trademark registrations owned by the Washington Redskins franchise must be canceled on the grounds that the term “redskins” is disparaging to Native Americans.  The PTO’s decision comes as calls to change the team’s name continue to escalate.  Just prior to the PTO’s decision, on May 22, 2014, 50 U.S. Senators signed a letter to the National Football League Commissioner Roger Goodell urging him and the league to endorse a change of the team’s name.  While the PTO’s decision may have symbolic significance to those who oppose the use of the term “redskins” in professional athletics, it ultimately may have no significant impact on the “Washington Redskins” brand or the team’s right to use and defend its trademarks.

The Origin of the Redskins Marks

The term “redskins” has been associated with the team since 1933 when its former owner, George Preston Marshall, changed the name of the franchise from the “Boston Braves” to the “Boston Redskins,” allegedly to honor the team's head coach, William “Lone Star” Dietz, who claimed to be part Native American.  Shortly after the name change, the team began using the word “Redskins” and the image of a Native American man to represent the team.  From September 1967 through July 1990, the franchise registered six “Redskins” trademarks with the PTO for entertainment services related to professional football competition.  The registered marks include the names “REDSKINS,” “WASHINGTON REDSKINS” and “REDSKINETTES” and logos depicting the profile of a Native American man with feathers.
 
Harjo v. Pro-Football, Inc.
 
Beginning in the late 1960s, Native American groups, including the National Congress of American Indians (NCAI), protested the use of “redskins” and Native American imagery as a team brand.  In 1993, the NCAI, which represents approximately 1/3 of Native Americans in the United States, passed a resolution (NCAI Resolution 93-11) stating the use of the registered marks by the Washington Redskins “has always been and continues to be offensive, disparaging, scandalous and damaging to Native Americans.”
 
In September 1992, seven Native Americans petitioned the Trial Trademark and Appeal Board (“TTAB” or “Board”), an administrative tribunal of the PTO, to cancel the six trademarks on the grounds that the word “redskins” disparaged Native Americans in violation of Section 2(a) of the Lanham Trademark Act of 1946, (15 U.S.C. § 1052(a)).  Harjo v. Pro-Football, Inc., 30 U.S.P.Q.2d 1828 (TTAB 1994), 50 U.S.P.Q.2d 1705 (TTAB 1999).  Federal law provides that any person (or entity) who believes he or she will be damaged by the continuing registration of a mark may file a petition with the Board to cancel the registration.  Section 2(a) allows the PTO to cancel registration of trademarks consisting of “matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”  The TTAB concluded that the trademarks “may be disparaging of Native Americans or a substantial composite of this group of people,” and “may bring Native Americans into contempt or disrepute.”  Id.  On April 2, 1999, the TTAB issued a cancellation order in which it scheduled the cancellation of the trademarks.  After several appeals, the U.S. District Court for the District of Columbia reversed the Board’s decision and ultimately held that the case was barred on the basis of laches.
 
Blackhorse v. Pro-Football, Inc.
 
While the Harjo case was still pending, five Native Americans brought a second, nearly identical cancellation proceeding against Pro-Football, Inc., the owner of the team, seeking to cancel the same registrations issued between 1967 and 1990.  Blackhorse v. Pro-Football, Inc., 111 U.S.P.Q.2d 1080 (TTAB June 18, 2014).  The petitioners presented a variety of cultural references to establish that the term “redskin” is an ethnic slur against Native Americans, including dictionary definitions, newspaper articles, movie clips, literature, historical references and expert linguistic testimony.  In opposition to the cancellation, the team argued the long tradition and significant investment in the brand supported the continued use of the name “Redskins.”

The Board held for the second time that the registrations must be canceled because they were disparaging to Native Americans at the respective times they were registered in violation of Section 2(a).  The Board found that the linguistic expert evidence indicated a clear trend beginning in 1966 to label the term as racially offensive, and by 1986, the dictionaries unanimously defined the term as offensive or disparaging.
 
Noting that the NCAI represented approximately 30 percent of Native Americans, the TTAB concluded that the petitioners had shown by a preponderance of the evidence that a “substantial composite” of Native Americans found the term “redskins” to be disparaging in connection with the marks as required by 2(a).
 
Finally, the Board rejected the team’s laches defense.
 
Symbolism Over Substance?

The team immediately announced that it would appeal the Board’s decision to a federal court.  During the appeal process, the team will be allowed to keep its trademark registrations and protections and the cancellation will not be recorded until after the federal court’s decision.
   
If the Board’s decision is affirmed, however, the team may lose the protections afforded by the federal registration of its team name and logo.  Federal registration offers a variety of protections, including public notice of ownership of the mark, a legal presumption of such ownership of the mark, an exclusive right to use the mark in connection with goods and services, the ability to use the federal registration ® symbol, the ability to register the marks with the U.S. Customs and Border Patrol Service to block importation of counterfeit products and the ability and ease to bring an action concerning the registered marks in federal court.  Without federal registration of the marks, the team potentially loses these protections and the economic value derived from these protections.  The Board’s decision, if affirmed, may encouraged the proliferation of cheap, low-quality knockoffs resulting in the loss of revenue to the franchise and esteem for Redskins merchandise.  It is estimated that the team generates millions of dollars in sales of products branded with the Redskins logo.
   
Nevertheless, the Board’s decision does not necessarily impact the bottom line for the Washington Redskins franchise.  Daniel Snyder, the current owner of the Washington Redskins, told a newspaper in May 2013 that he will never change the team’s name and he would be pleased to know that the Board’s decision does not require the team to change its name.  While the Board may have the authority to determine whether a mark may be registered, it does not have the authority to require a party to cease use of a mark.  Therefore, even if the Board’s decision is affirmed, the team may continue to sell clothing and other paraphernalia with the team name and logo.
 
The team also likely will continue to enjoy certain legal protections with respect to the marks.  The franchise can assert its right to the trademarks and defend its rights against those who infringe and wrongfully profit from the marks under “common law.”  Common law trademark rights are developed through the use of the marks over a period of time and federal registration of the marks is not required to establish common law rights in a mark.
 
While the team does not yet appear ready to bow to increased public pressure to change the name, a significant increase in trademark infringement lawsuits or a significant loss of revenue due to cheap or inferior knockoffs may eventually prompt the team to reconsider its decision.  At present, however, it is premature to call this decision a victory for those who oppose the team name. 

Topics:  Football, Redskins, Trademarks, USPTO

Published In: Civil Procedure Updates, Communications & Media Updates, Indigenous Peoples Updates, Intellectual Property Updates

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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