No professional sports team has generated more controversy regarding its nickname than the Washington Redskins. For decades, Native American groups have spoken out against the name, which they consider racist and disparaging. In recent years, others – including President Obama – have voiced their opinion that the team owners – currently Daniel Snyder – should change the name. Mr. Snyder, however, has steadfastly refused to do so.
On June 18, 2014, the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office (“USPTO”) cancelled the team’s Federal trademarks on the grounds that they were disparaging to Native Americans. This action is the latest in a long line of legal wranglings whose objective is to pressure the owner of Washington, D.C.’s football team to change its name.
What does the TTAB’s decision mean in regards to the larger fight over the use of the “Redskins” name? Also, what implications does this fight have for other teams whose nicknames are based upon ethnic groups, such as our own Minnesota Vikings?
How Did the “Redskins” Name Originate?
The team now known as the Washington Redskins originated as the Boston Braves, based in Boston, Massachusetts, in 1932. At the time the team played in Braves Field, home of the Boston Braves baseball team. The following year the club moved to Fenway Park, home of the Boston Red Sox, whereupon owners changed the team’s name to the Boston Redskins. The Redskins relocated to Washington, D.C. in 1937.
Legal Principles: The Lanham Act
The Lanham (Trademark) Act, enacted July 5, 1946, codified at 15 U.S.C. § 1051 et seq. (the “Act”) is the primary federal trademark statute of law in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising. Sections 42 and 43 of the Act set out the remedies that can be sought when a trademark is infringed. These provisions forbid the importation of goods that infringe registered trademarks, and restrict, through the use of injunctions and damages, the use of false descriptions and trademark dilution.
The Act also specifies the guidelines for registering a federal trademark and what types of marks cannot be registered. 15 U.S.C. §1052(a) provides that “no trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it…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 into contempt, or disrepute….
Once a trademark has been issued, 15 U.S.C. §1064 permits any person who believes that he is or will be damaged by the registration of a mark on the principal register to file a petition to cancel the registration of the mark.
History of the “Redskins” Trademarks and Prior Legal Action
The Washington football team filed several federal trademark registrations with variants of the name “Redskins” from 1967-1990. In 1992, Native American activist Suzan Harjo led seven Native Americans in petitioning the TTAB to cancel six trademark registrations owned by Pro-Football, Inc., the corporate entity that then operated the Washington Redskins. The TTAB granted the petition, and the owner appealed to the United States District Court for the District of Columbia, which overturned the cancellation on two grounds. The District Court found that the TTAB lacked substantial evidence to find disparagement, and since the Redskins had registered their marks as early as 1967, the petition was barred by laches – an equitable legal theory which prohibits a party from waiting so long to file a claim that it becomes unfair to the other party. The complainants then appealed the decision to the Court of Appeals which upheld the laches defense but did not rule on the disparagement claims.
While the Harjo case was pending, a second cancellation petition was filed by a group of Native Americans who were younger than the Harjo petitioners. The objective of the second petition was to avoid the laches defense which led to the team’s victory in the Court of Appeals. The TTAB withheld a ruling on that matter, brought by petitioners Amanda Blackhorse, Marcus Briggs – Cloud, Philip Gover, Jillian Pappan and Courtney Tsotigh – pending the Court of Appeals’ final decision in Harjo. Once the Harjo ruling was issued in 2005, the Blackhorse petition moved ahead with the TTAB.
The Blackhorse Decision
The TTAB determined, based upon the evidentiary record in the proceeding and on applicable law, that the Blackhorse petitioners met their burden to establish that the term “Redskins” was disparaging of Native Americans when used in relation to professional football services, at the times the various trademark registrations involved in the cancellation proceeding were issued. Thus, the TTAB concluded, the federal registrations for the “Redskins” trademarks involved in the proceeding must be canceled.
What the Decision Means
The TTAB’s decision to cancel the “Redskins” registrations means that, if not appealed or if affirmed following a possible review by a federal court, the trademark owner will lose the legal benefits conferred by federal registration, including the legal presumptions of ownership and of nationwide scope of rights in these trademarks, as well as the ability to use the federal registration ® symbol, and to record the registrations with the U.S. Customs and Border Patrol Service to block importation of infringing or counterfeit foreign goods. The decision does not, however, require the trademarks in the involved registrations to be changed or no longer be used by Washington D.C.’s pro football team. The TTAB does not have jurisdiction in a cancellation proceeding to require that a party cease use of a mark, but only to determine whether a mark may continue to be registered. Further, the TTAB’s decision can be reviewed by a federal court (the team’s attorney has already indicated that an appeal will be forthcoming). In the meantime, the registrations will not appear in the USPTO’s records as canceled until after judicial review is completed.
Further, the cancellation of the marks does not mean that a sports fan can produce and sell Washington Redskins gear without obtaining advance permission from the team. If the gear creates a false representation that it originated from the NFL’s Washington Redskins organization, then that fan may be in violation of improperly benefiting from the use of the team’s common law protected trademark and be forced to pay damages related to the infringing use, as federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark….
The Washington Redskins organization has made it known that use of the Redskins name and logo will continue. There is little doubt in the public sphere as to a clear association between such marks and the NFL organization. Thus, whether the team prevails in appealing the cancellation of the federal registrations of the marks or not, it may still use such marks in commerce and prevent others from trying to benefit off of the use of same without consent.
What About the Vikings?
So, what does the cancellation of the Washington D.C. football team’s allegedly disparaging trademarks mean for our own beloved Vikings? Could a group of Scandinavians seek to cancel the Vikings’ trademarks on the grounds that their portrayal of their culture as a group of marauding pillagers disparages them? If that happened, would the TTAB find in their favor? It’s probably not likely – in fact some of my friends of Scandinavian descent have suggested that the team’s historic failings in the championship department cast more of a negative light on their ancestry than the portrayal of them as pillagers – but back in 1967, when the Washington D.C. football team registered its first trademark involved in the TTAB proceeding, who could have foreseen the recent result?