Sudden Death in Overtime

n a decision that has been met with considerable praise and controversy, on June 18, 2014, the Trademark Trial and Appeal Board of the United States Patent and Trademark Office ordered the cancellation of six U.S. federal trademark registrations owned by the NFL’s Washington Redskins on the grounds that the use of the term “redskins” is disparaging to Native Americans (Blackhorse v. Pro-Football Inc., Cancellation No. 92046185).  The Board’s decision comes after years of intense litigation, which included challenges by both sides at the district court and appellate levels. 

The marks at issue had been registered between 1967 and 1990.  Back in 1992, a group of Native Americans had petitioned to cancel the marks, but that effort came to a standstill in 2009 after the Washington Redskins successfully prevailed on a laches defense.  In that case, the D.C. Circuit Court of Appeals found that the claimants had waited too long after reaching the age of 18 years old to file their petition, and the court overturned the Board’s original decision on that ground (see Harjo v. Pro Football, Inc., 90 U.S.P.Q.2d 1593 (D.C. Cir. 2009)).

But, with six new claimants in tow – each of whom recently turned 18 (the critical date from which laches begins to run) – the new group of Native American petitioners commenced a second proceeding to cancel all six of the Redskins’ registrations for violating Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a).  Under Section 2(a), trademarks consisting of “immoral, deceptive, or scandalous matter; or which may disparage” or “bring into contempt or disrepute” persons, living or dead, institutions or beliefs may not be registered and are otherwise susceptible to cancellation.

To determine whether a term is disparaging under Section 2(a), the Board engages in a two-part test.  First, it must determine the meaning of the term in question as it appears in the mark, as used in connection with the goods and services identified in the registration.  The second prong required the Board to determine whether the meaning of the mark disparages Native Americans.  In order to be eligible for cancellation under this test, the marks must have been disparaging at the time each was originally registered.

In undertaking its analysis (memorialized in an 81-page decision, accompanied by an 18-page dissent), the Board relied extensively on the voluminous evidentiary record developed in the earlier cancellation proceeding, which both sides agreed the Board could review.  That record consisted of copious expert testimony from linguists and lexicographers regarding the meaning and evolution of the term “redskins,” dictionary definitions, reference books from the applicable time periods, as well as a resolution and report from the National Congress of American Indians (NCAI), which represents 150 tribes covering roughly 30 percent of the Native American population, explaining why its constituents resoundingly regard “redskins” as an offensive racial epithet.

As to the first prong, the Board concluded that the football organization’s use of the term “Redskins” was intended to denote Native Americans.  To be sure, the team’s oft-used Native American iconography leaves little doubt that its name, when used in connection with a professional football organization, refers to Native Americans.

On the second question – and based on the D.C. Circuit’s 2003 determination that any such challenge requires a “substantial composite” of the affected group to find the term disparaging – the Board found that the record established that at least thirty percent of Native Americans perceived the term “redskins” to be offensive at the time that each of the six registrations issued.  Although the football team argued that its own evidence demonstrated that many Native Americans do not regard the term as disparaging, in the majority’s view, such evidence cannot negate the opinion of a substantial composite of the population: “once a substantial composite has been found, the mere existence of differing opinions cannot change the conclusion.”  Based on those findings, the Board granted the petition to cancel all six registrations.

The Board’s decision does not mean that the Washington Redskins have lost their extensive and well-established common law trademark rights, nor does the decision compel the team to change its name (although the court of public opinion may encourage it to do so).  Indeed, the Washington Redskins may still file infringement actions in state and federal courts. However, the loss of its registrations will have severe repercussions for the organization’s ability to enforce its trademark rights.  For instance, under the Lanham Act, trademark registrations are entitled to a presumption of validity, thereby reducing the registrant’s burden of proof at trial.  They also allow registrants to seek enhanced remedies in enforcement proceedings.  In addition, owners may record their registrations with U.S. Customs and Border Patrol, which will monitor illicit importations and seize any found counterfeit goods on behalf of the owner.

However, the Board’s ruling is not the end of the game for the Washington Redskins: the team has already announced its intention to appeal the decision.  Be sure to follow the CDAS blog for more post-game highlights.