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Intellectual Property Newsletter

Improper Cancellation of the “Redskins” Trademark

In September 2003, a federal district court in Washington D.C. determined that the trademark “Redskins” had been erroneously cancelled by the Trademark Trial and Appeal Board (TTAB). According to the court, no substantial evidence supported the TTAB’s conclusion that the term was disparaging to Native Americans.

Background

Pro-Football, Inc. owns various “Redskins” trademarks, used primarily by the Washington Redskins, a professional football team. In 1999, in response to a petition filed by a group of Native Americans, including activist Susan Harjo, the TTAB cancelled six “Redskins” trademarks. The TTAB found that the marks “may disparage” Native Americans or “bring them into contempt, or disrepute.” On appeal to the federal district court, Pro-Football, Inc. requested that the court overturn the TTAB’s cancellation order.

The Lanham Act – Insufficient Evidence for the TTAB Findings

Section 2(a) of the Lanham Act (the federal trademark statute) states that a mark may not be registered if it consists of “matter which may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” To determine whether the mark might be disparaging, the TTAB looked “not to American society as whole…but to the views of the referenced group.” Pursuant to this analysis, the TTAB set forth a two-step test:

  1. What is the meaning of “Redskins” as used in connection with Pro-Football’s services?
  2. Is this meaning one that may disparage Native Americans?

To answer these questions, the TTAB relied on two sources of evidence: the testimony of legal experts and evidence from a survey conducted by Harjo.

As to the first question, the TTAB concluded, and the court agreed, that “‘Redskins’ clearly both refers to [the] professional football team and carries the allusion to Native Americans inherent in the original definition of the word.”

With respect to the second question, the court disagreed with the TTAB’s conclusion that “Redskins” may disparage, and be considered disparaging by, Native Americans. Rather, after review of the TTAB’s findings of fact, the court held that the conclusion was not supported by substantial evidence. Among other problems with the TTAB’s analysis, the court referenced the following:

  • The TTAB improperly extrapolated results to the entire Native American population from a survey that relied on a relatively narrow sampling of Native American opinions.
  • The survey did not sufficiently represent the views of Native Americans as a whole.
  • No evidence was presented as to the overall number of Native Americans who would find the word “Redskins” offensive.
  • The survey results had no relevance to Native Americans’ views regarding the use of “Redskins,” as used in connection with the professional football team.
  • The TTAB improperly analyzed how the use of “Redskins” in connection with Pro-Football’s services disparages Native Americans.
  • The survey was conducted contemporaneously with litigation, not when the trademarks were registered (or renewed).

The Lanham Act – Laches

The Lanham Act requires that objections to the grant of trademark status for a name be made within five years of filing. The use of the name “Redskins” for the Washington football team began in 1937 and the registration took place in 1966. The complaint of Harjo, et al. was not filed until 1992. The court found that no objection had been raised to the registration of the name in 1966 or within five years thereafter. The complaining parties thus waited too long to complain, and were therefore guilty of “laches” for failing to act diligently to object to the trademark, effectively barring their claims.

Conclusion

As noted, the court ultimately reversed the TTAB’s cancellation of the marks because it found that this determination was not supported by substantial evidence and the objection was not raised timely. The court cautioned, however, that its opinion “should not be read as making any statement on the appropriateness of Native American imagery for team names.”

In November 2003, the complaining group of Native Americans announced that they would appeal the district court’s decision. Either they changed their minds and withdrew the appeal or the court of appeal refused to consider it, for no opinion was ever issued.

In August of 2006 six young American Indian petitioners filed a joint petition with the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office for the cancellation of the Redskins trademark. Since the six petitioners are between the ages of 18 and 24, the doctrine of laches will not be applicable to their petition.

The issue continues to generate a great deal of controversy. Many thought the small group of Native Americans was being overly-sensitive and the name was complimentary, while others questioned why the team would want to keep a name considered offensive and demeaning by so many. The Washington Redskins kept the name (and still reap millions from the sale of merchandise with the team logo). In many states, however, use of Native American names, imagery and mascots has been banned or abandoned for public school sports teams.

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