U.S. PTO Trademark Trial and Appeal Board cancels registration of marks containing name Redskins (Blackhorse, et al. v. Pro-Football, Inc., TTAB (June 18, 2014))

By Irene Calboli

On June 18, 2014, the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO) wrote an important page in the dispute over the marks “Redskins” that has been ongoing for over two decades. Notably, the TTAB cancelled six federal registrations for trademarks that include the name “Redskins” that were registered by Pro Football Inc. between 1967 and 1990,[1] accepting the request brought forward by five Native Americans who argued that the name “Redskins” is disparaging for the Native American population and violates Section 2(a) of the Trademarks Act (Lanham Act), which prohibits the registration of marks that consist of matter that may disparage or bring into contempt or disrepute any person, institution, or belief.[2]

This decision comes after a similar decision by the TTAB in 1999,[3] where another group of Native Americans (seven prominent leaders) challenged the trademarks as disparaging under Section 2(a). Against the TTAB ruling, however, Pro-Football appealed to the District Court for the District of Columbia, which granted summary judgment in favor of the team and reinstated the cancelled registrations. The court held, in particular, that the Native American plaintiffs’ claims were barred by laches since they were unjustifiably delayed in bringing the action when some of the trademarks had already been registered for as long as 25 years by the time of the lawsuit.[4] In contrast, in its 1999 ruling, the TTAB had ruled that laches did not apply because matters of broad public policy are not subject to the equitable defense of laches.[5] The district court’s ruling in favor of Pro-Football was ultimately upheld by the Court of Appeals for the D.C. Circuit,[6] and Supreme Court denied petition for certiorari.[7]

Hence, in 2006, a new group of five younger Native Americans petitioned the TTAB to cancel the six “Redskins” registrations.[8] In the decision at issue, the TTAB again found that the term “Redskins” was derogatory with respect to Native Americans, even though it was commonly associated with the Washington football team. The TTAB examined expert testimony and dictionary evidence, and concluded that at least 30 percent of Native Americans found the mark, in connection with professional football, to be offensive or disparaging.[9] The TTAB additionally revisited the issue of laches[10] and again ruled that the equitable defense does not apply where there is a broader public policy concern at issue. 

Still, the June 2014 TTAB decision does not necessarily put an end to this dispute. The football team has already issued a statement expressing its confidence of a more favorable outcome on appeal.[11]

Nevertheless, should the team decide not to appeal due to public pressure or other reasons, or should the cancellation of the “Redskins” trademarks be affirmed by subsequent federal court review, Pro-Football will lose the legal benefits of federal registration of the marks.[12] This means that the team will lose the legal presumptions of ownership and of a nationwide scope of rights, the ability to use the federal registration symbol, and the ability to record the registrations with Customs and Border Protection in order to block the importation of infringing or counterfeit foreign goods.[13]

Last, but not least, Pro-Football will likely continue to retain common law rights in the marks—that is, its use-based rights will continue even in the case that the cancellation of its federal registrations would be upheld in federal courts. In this respect, Pro-Football could continue to invoke exclusive rights to the “Redskins” trademarks (and related merchandise) based on Section 43(a) of the Lanham Act.[14] Hence, the argument could be made that a cancellation based on Section 2(a) could also affect the ability of the team to enforce its common law rights based on Section 43(a), even though many signs that could not be registered have traditionally enjoyed the unfair competition protection of Section 43(a). To date, however, no court has ruled on the effect on Section 43(a) of a trademark cancellation based on Section 2(a)—i.e. in the case of a disparaging mark. We thus cannot exclude the possibility that the application of Section 43(a) could be preempted by a trademark cancellation based on Section 2(a) as a matter of public policy. In this case, it would be interesting to see whether the court in question would find that a sign that has been deemed unregistrable—because it is disparaging and offensive—could still be protected based on unfair competition principles under Section 43(a) of the Lanham Act.

 

[1] Blackhorse, et al. v. Pro-Football, Inc., Cancellation No. 92046185 (June 18, 2014), available at http://ttabvue.uspto.gov/ttabvue/v?pno=92046185&pty=CAN&eno=199.

[2] Lanham Trademark Act of 1946 §2(a), 15 U.S.C. § 1052(a) (2006). The word “redskin” is generally understood to be a derogatory racial epithet referring to Native Americans. The term refers to scalping.

[3] Harjo v. Pro Football, Inc., 50 U.S.P.Q.2d (BNA) 1705 (T.T.A.B. 1999).

[4] Pro Football, Inc. v. Harjo, 284 F. Supp. 2d 96 (D.D.C. 2003).

[5] Harjo v. Pro Football, Inc.,30 U.S.P.Q.2d (BNA) 1828, 1833 (T.T.A.B. 1994).

[6] See Pro-Football, Inc. v. Harjo, 565 F.3d 880, 880–1 (D.C. Cir. 2009).

[7] Harjo, 565 F.3d 880 (D.C. Cir. 2009), cert. denied, 130 S. Ct. 631 (2009).

[8] Blackhorse, et al. v. Pro-Football, Inc., Cancellation No. 92046185 (June 18, 2014).

[9] Id. at 71 (finding that 30 percent was “without a doubt a substantial composite”).

[10] Id. at 73-4(ruling that the enactment of the AIA, which changed the venue for appeals from the USPTO inter partes proceedings, meant that the previous laches decision by the U.S. District Court for the District of D.C. was not binding or persuasive).

[11] Statement by Bob Raskopf, Trademark Attorney for the Washington Redskins, Washington Redskins: Press Release (June 18, 2014), available at http://files.redskins.com/pdf/Statement-by-Bob-Raskopf-Trademark-Attorney-for-the-Washington-Redskins.pdf.

[12] Id.

[13] Lanham Act §42(a), 15 U.S.C. § 1124(a) (2006).

[14] Lanham Act §43(a).

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