Member Article

On June 18, 2014, the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office granted a petition to cancel six trademarks owned by the Washington Redskins football team. InAmanda Blackhorse, et al. v. Pro-Football, Inc., the TTAB, by a 2-1 vote, held cancellation of the trademarks was warranted “because they were disparaging to Native Americans at the respective times they were registered.” See opinion here. If this decision is upheld on the expected appeal, not only will the Washington Redskins lose their federal registrations, but dozens or hundreds of other trademark registrations may suddenly be challenged as being disparaging to various groups.

This case is the second time the TTAB has been asked to cancel these same trademark registrations owned by the Washington Redskins football franchise. In 1992, Suzan Harjo and six other Native Americans filed a petition to cancel them, claiming that the word REDSKINS in the registrations “consist of or compose matter which disparages Native American persons, and brings them into contempt, ridicule and disrepute; and the marks consist of or comprise scandalous matter.” In 1999, the TTAB agreed with Harjo and held that the trademarks were in fact disparaging and ordered their cancellation. The Harjo decision, however, was ultimately reversed on a laches defense after appeal to the Court of Appeals for the D.C. Circuit rather than on the substantive disparagement claim. The first case was dismissed in 2010.

As the Court of Appeals never addressed the TTAB’s finding of disparagement on the merits in the Harjoproceeding, a group of five young Native Americans, believing they were not barred by the laches defense in the first proceeding due to their age, initiated a second cancellation proceeding. To simplify the present case, both sides stipulated that evidence submitted in the Harjo proceeding was admissible, subject only to relevance objections. It appears that the only new evidence submitted was the deposition testimony of the individual petitioners.

The TTAB cited to a previous Harjo decision for the appropriate test for disparagement, namely:

a. What is the meaning of the matter in question [the word REDSKINS] as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations?

b. Is the meaning of the marks one that may disparage Native Americans?

The new TTAB decision states that “disparage” is used as “an umbrella term for ‘may disparage…or bring into contempt or disrepute.’” Similarly, the majority states that the disparagement claim only pertains to the term REDSKINS, but not to the Native American imagery that the team uses in conjunction with the marks. That being said, parts of the record published within the decision contain such Native American imagery.

After reviewing the voluminous record from the Harjo proceeding, the majority ruled that each of the six trademarks was disparaging and should be cancelled after finding that the “word REDSKIN on its face is and always has been a racial designation,” that dictionaries “include a usage label indicating the term is offensive, disparaging, contemptuous or not preferred,” and that “at a minimum, approximately thirty percent of Native Americans found the term ‘REDSKINS’ as used by the football team to be disparaging.” The dissenting judge of the TTAB panel would not have cancelled the registrations, as he found the dictionary evidence to be “inconclusive” and the reference to the thirty percent number to be unsupported by reliable evidence.

The football team tried to assert another laches defense because too much time had passed, but the TTAB ruled that the public interest in such a “human dignity” case prevents the application of such an equitable defense. The majority further noted that, even if the laches doctrine were to apply, laches was not present due, in large part, to the age of the younger petitioners and their inability to petition the TTAB before they turned eighteen.

It is expected that the football team will again appeal the ruling of the TTAB, so this 22-year legal battle is likely to extend a few more years. Moreover, the TTAB has no power to force parties to stop using a trademark, so even if the decision is upheld on appeal, the team can still continue to use the Washington Redskins name. Also, today’s decision does not affect state law and common law rights in the marks. But with the Trademark Office’s ruling that laches does not apply in these types of disparagement claims, we expect to see other groups challenge other long-standing marks for disparagement.

If you have any questions regarding these matters, please contact us.