The Washington Redskins have engaged in an endless legal battle with angry and offended opposers over the use of its controversial REDSKINS trademarks. After a slew of oppositions, spanning over ten years, the Trademark Trial and Appeal Board (“TTAB”) finally issued a decision (hereinafter “Decision”) on Wednesday against the Washington Redskins to cancel six trademark registrations (hereinafter “REDSKINS marks”) issued from 1967 – 1990. Although this holding brings temporary resolution to a longstanding issue, with appeals soon to be filed, there is surely no end in sight to this legal battle.
A HISTORY OF CONFLICT
Although he declines to comment at this time, a rather calm and collected Daniel Snyder (owner of the Washington Redskins) will continue to push back on any attempts to force him to rename his beloved team. For years, Snyder has repeatedly vowed to never change the team’s name and it seems that Wednesday’s ruling will have little influence on his position. Perhaps the main reason why this decision has had little impact on Snyder is due in part to the fact that this decision is only one stage of nearly 10 years of litigation.
The battle began on September 10, 1992, when seven Native American plaintiffs filed a petition to cancel the REDSKINS marks on the grounds that the mark utilized disparaging language to Native American individuals, forcing them to suffer “contempt, ridicule, and disrepute.”[1] Additionally, the plaintiffs argued that the mark was comprised of scandalous matter in direct violation of Section 2(a) of the Trademark Act. Following seven years of litigation, the Board issued a decision, holding that the REDSKINS marks were, in fact, disparaging to Native Americans when registered and ordered the registrations canceled.[2]
Soon thereafter, the decision was appealed to the US District Court for the District of Columbia and later reversed for two reasons. First, the court determined that the finding of disparagement was insufficiently supported by evidence and called for reversal. Second, the decision was reversed on the grounds that the doctrine of laches precluded the court from hearing the case (i.e. the plaintiffs waited too long to make a claim for opposition after the original REDSKINS marks were registered and published for opposition).[3]
Appealed once again, the US Court of Appeals for the District of Columbia Circuit held that the District Court applied an inappropriate standard to determine whether laches applied. They reasoned that laches only runs from the point at which the party has reached majority. The court sent the case back to the District Court to re-evaluate the laches issue and whether it barred the plaintiff’s claim.[4] Although the court ruled on the issue of laches, the question of whether the REDSKINS marks were disparaging still remained, and no resolution was ever gained.
While the former decision was pending, six new individuals filed a petition to cancel the same REDSKINS registrations, marking the commencement of the recently settled proceeding. Repeating history, the Board held that “the registration must be cancelled because they were disparaging to Native Americans at the respective times they were registered, in violation of Section 2(a) of the Trademark Act of 1946, 15 U.S.C. Section 1052(a).”[5]
THE LAW: DISPARAGEMENT
The TTAB based its Wednesday Decision on the grounds that the REDSKINS marks are “disparaging of Native Americans,” violating federal trademark laws that prohibit registration of offensive and disparaging language. The U.S. Patent and Trademark Office (USPTO) uses a two prong-test to determine whether a particular trademark has disparaging capabilities to a group of individuals: (1) is the mark understood as referring to an identifiable group of people? and (2) may that reference be perceived as disparaging to a substantial representation of that group?[6]
When considering whether the trademark actually identifies a particular group of individuals, the court will look to the dictionary definition of the term, the relationship between the term and other elements of the mark, the type of product utilizing the mark, and how the mark will appear in the marketplace.[7] In this case, the court held that the use of the REDSKINS marks clearly represents the Washington football team and “carries the allusion to Native Americans inherent in the original definition of that word.”[8] Additionally, the court noted that the current use of the word maintains the meaning of “Native Americans.” Paired with the imagery [fig. 1] of a Native American man placed between the words “WASHINGTON” and “REDSKINS”, and photographs of Washington cheerleaders dressed head to toe in Native American costumes, the court determined there was no doubt that the use of the mark is made in reference to the Native American individuals.
In reference to the second prong of the analysis, the court noted that when deciding whether a mark is disparaging to a particular class of people, it must not look to the American population as a whole, but through the point of view of the referenced group – i.e. how Native Americans view the REDSKINS marks.[9] Here, depending on several expert reports, the court determined that the use of the word was rooted historically in the European colonization of the 16th and 17th centuries. Used as an ethnic term, the word referred to the color of skin in conjunction with other racial slurs such as “blue skins” for African Americans.[10] Over the years, the public has become increasingly aware of the offensive nature of the term “redskins.” As such, the word, when used, is considered a social faux pas. Thus, the court held that the marks were in fact disparaging, and called for cancellation of the REDSKINS marks.
WHERE DOES THIS LEAVE THE WASHINGTON REDSKINS NOW?
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Brittany is a 2L at Loyola Law School, Los Angeles with a focus on Entertainment and Intellectual Property Law. At KHS, she works as both a Law Clerk and Marketing Director.
With intentions to quickly appeal the recent decision, the Redskins plan to hold back on cancelling the marks until an appeal decision is reached, and it remains unclear whether the TTAB Decision will have any bearing on the validity of the REDSKINS marks. Redskins attorney, Bob Raskopf, released a statement “We’ve seen this before…And just like last time, today’s ruling will have no effect at all on the team’s ownership of and right to use the Redskins name and logo. We are confident we will prevail once again.” Until an appeal decision is issued, the Redskins may continue to use the REDSKINS marks in question; however, it will forfeit a substantial portion of it’s financial interests in the marks and may no longer exercise a legal right to assert federal trademark protection in those marks.
While it is possible that the Redskins will prevail on appeal, it may be time for Snyder to consider the practical effects of maintaining a name subject to constant conflict. Within the past year, the public has initiated an aggressive stance and support of opposition to the controversial name. Just this past Saturday, a major sector of the United Church of Christ voted to encourage its 40,000 plus members to boycott the Redskins. Additionally, half of the Senate drafted letters to the NFL pleading for change. One of the letters reportedly stated, “Racism and bigotry have no place in professional sports.” Likewise, D.C. Mayor Vincent Gray commented that if the team plans on rebuilding a new stadium in the city, any plans would likely be conditioned on a name change.
Where prominent figures continue to feed into the public, messages of resistance and opposition against the name, legal determinations may not have a final say in whether the Redskins will continue to use their name. Owner, Snyder must way the benefits of maintaining a long standing tradition of the Washington Redskins name with the potential loss if fans are swayed by the influx of negative press and resistance towards the name. Although there is no resolution in sight, it is clear that the Redskins will face difficulty in the years to come, both by the court system, and by the public at large.
[1] Blackhorse v. Pro-Football, Inc., No. 92046185, Op. at 4 – 5 (TTAB June 18, 2014).
[2] Harjo v. Pro-Football, Inc., 50 USPQ2d at 1743.
[3] Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 68 USPQ2d 1225, 1263 (D.D.C. 2003).
[4] Pro-Football, Inc. v. Harjo, 415 F.3d 44, 75 USPQ2d 1525, 1528 (D.C. Cir. 2005).
[5] Blackhorse v. Pro-Football, Inc., No. 92046185 at 2.
[6] Id. at 15.
[7] Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d (BNA) 1705 (TTAB 1999); Pro-Football, Inc. v. Harjo, 415 F.3d 44 (D.C. Cir. 2005).
[8] Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d 1742, rev’d on other grounds; Pro-Football, Inc. v. Harjo, 68 USPQ2d at 1249.
[9] Pro-Football Inc. v. Harjo, 68 USPQ2d at 1247; Harjo v. Pro-Football, Inc., 50 USPQ2d at 1739.
[10] Blackhorse v. Pro-Football, Inc., Op. 92046185 at 26 – 27.