Article Published: July 3, 2014
Article Published: July 3, 2014
By Cecilia R. Dickson, Shareholder, The Webb Law Firm
On June 18, 2014, the Trademark Trial and Appeal Board issued a 177-page, split-decision in Amanda Blackhorse, et al. v. Pro-Football, Inc. granting a cancellation petition pertaining to six trademark registrations issued between 1967 and 1990 containing the word “redskin”. Pro-Football, Inc. does business as The Washington Redskins football club. The TTAB concluded that “redskin” disparaged Native Americans as of the date each respective trademark registered, and thus the registrations were subject to cancellation.
The cancellation proceeding involved six trademark registrations containing the word “redskin”, namely, WASHINGTON REDSKINS, REDSKINS, REDSKINETTES and THE REDSKINS for professional football-related services. The relief sought by the petitioners was cancellation. The grant of the petition does not mean that these trademarks cannot be used by the Washington football team nor does it mean that the common law rights in and to these trademarks are unenforceable, particularly as to other entities which may be using confusingly similar trademarks on similar related goods or in regard to similar services. Rather, the decision means that, assuming the decision withstands appeal, these trademarks are not subject to federal registration and the benefits afforded by such registration. Of course, the federal registrations continue to remain viable until the time for all appeals is exhausted.
The ability to cancel these trademark registrations rests both on successfully overcoming the laches arguments raised by the registrant and demonstrating that the marks were considered derogatory terms at the time that the marks registered. Because the registration of some of these marks dates back nearly fifty years, marshalling sufficient evidence regarding the opinions of Native Americans as to the term “redskin” at the time of each of these registrations is not an easy task.
Moreover, this is the second time that the Trademark Trial and Appeal Board has been confronted with a cancellation petition as to these marks. See Harjo v. Pro Football, Inc., 30 USPQ2d 1828 (TTAB 1994). In that earlier proceeding, the Board cancelled the registrations, only to be reversed by the U.S. District Court for the District of Columbia due to the District Court’s finding that substantial evidence had not been provided to support a finding of disparagement and because laches prevented any consideration of cancellation. On appeal, the D.C. Circuit Court remanded the case for consideration of laches involving one of the petitioners. The District Court, on remand, affirmed the finding of laches, which was later affirmed by the D.C. Circuit.
Prior to the conclusion of the Harjo case, the petitioners in the instant cancellation filed this proceeding again asserting disparagement. Of critical import to the outcome of this decision, the parties, namely the new petitioners and the registrant, stipulated that the Harjo record could be submitted in its entirety in the instant opposition to the Board through a notice of reliance. The parties only reserved their rights to object based on relevance.
The Board focused on the following two-step inquiry for disparagement: (1) What is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations; and (2) Is the meaning of the marks one that may disparage Native Americans? Both questions turn on the state of affairs and contemporary attitudes as of the dates of registration for the various mark registrations. As to the first prong, the Board found the evidence overwhelmingly establishes that “redskin” intends to refer to Native Americans. The Board noted that the imagery of a Native American is prominently featured with the marks. Even though the imagery was not specifically identified in the cancellation proceedings, it was relevant to determining the first prong of the disparagement analysis. Headdresses worn by band members associated with the football team, cheerleader costumes suggestive of Native American attire and other imagery used in guides and advertisements for the football team demonstrated conclusively to the Board that the reference to Native Americans existed.
To satisfy the second prong, the Board had to determine whether the term “redskin” disparaged Native Americans at the time of the registration of the marks. The Board analyzed various disparagement cases, some of which involved a mark being deemed disparaging because of the goods or services on which the mark was associated. Here, though, the Board determined that the registrant’s intent and manner of use were irrelevant to whether the term “redskin” was disparaging, as the nature of the services and registrant’s intent did not remove
the association of “redskin” as a reference to Native Americans. Thus, the Board concluded that, so long as the evidence supports that the marks were disparaging during the relevant time period, the Trademark Act mandates removal from the register. The Board looked to the general analysis of the word “redskin” and the specific usage of the term, as well as how Native Americans at the pertinent time interpreted the term. Among the materials considered were letters of protest, news reports and other archival information from the time period demonstrating that the term was offensive. The registrant supplied its own archival evidence in the form of letters demonstrating some Native Americans had written letters in support of use of the term “redskin” as a football team nickname. All of this information was presented to the Board.
Confronted with all of the evidence, the Board determined by a preponderance of the evidence that the term “redskin” is disparaging and that both prongs of the disparagement test had been met. Accordingly, the Board’s next step was to consider the laches defense. The D.C. Circuit’s precedent in the Harjo case made clear that laches could be a viable defense in such cases. However, the Board noted that because the America Invents Act (AIA) changed which court handles appeals to the District Court from such inter partes proceedings from the D.C. Circuit Court to the District Court for the Eastern District of Virginia, the Board was empowered to revisit the applicability of the laches defense. Upon reviewing the governing precedent of the Fourth Circuit, the Board held that the defense does not apply to this disparagement claim because of the broader public concerns at issue. The Board reasoned that because the laches defense is an equitable defense, the balancing of the equities militates against an application of a laches defense in this circumstance. In addition, the Board recognized that even if the laches defense was applicable, in this specific case, the registrant could not demonstrate any unreasonable delay or prejudice.
Just as in the Harjo case, this decision is subject to appeal, and thus it will likely be some time before the full and final impact of the decision (assuming it withstands appellate scrutiny) is felt. Moreover, while the decision does not mean that every other mark that includes a reference to Native Americans (i.e., KANSAS CITY CHIEFS, ATLANTA BRAVES, CLEVELAND INDIANS, etc.) will likewise be cancelled, the risk of loss of the benefits of federal registration could prompt changes by registrants to phase out these marks in favor of other marks. Indeed, the NCAA has adopted a policy that requires abandoning Native American nicknames. Others, like Miami University, changed their team nicknames at the urging of Native American tribes, as well as their own constituents. Practically, action may be taken that is not required by this decision, but has been prompted by the decision.
More broadly, though, this decision repeatedly shows the effect of the broad admission of evidence and the consequences of sweeping waivers of objections. Attempts were made to keep out certain evidence, but such later attempts were denied based on the evidentiary stipulation of the parties. It is clear that the USPTO has not permitted marks to register containing the term “redskin” in recent years that were determined to be immoral, deceptive, scandalous, disparaging, or which brought persons, living or dead, into contempt or disrepute. What makes this case unique and of interest is that this case involves registered marks, not trademark applications. The Board was able to reference materials from as far back as the 1960s in an effort to make a legal determination regarding contemporary attitudes at that time. The appellate courts will consider whether the Board’s analysis rests on sufficient factual and legal support to justify the Board’s determination.
 Special thanks to Michael Smithula, law clerk with the Firm, for assistance in researching this article. The opinions set forth in this article are those of the authors alone and do not necessarily represent the opinions of The Webb Law Firm or its clients.
Cecilia R. Dickson is a shareholder of The Webb Law Firm, focusing on trademark prosecution and portfolio management and trademark, patent, copyright, and trade secret litigation and counseling. Cecilia is the former chair of the Pennsylvania Bar Association Intellectual Property Law Section, the former chair of the Pittsburgh Intellectual Property Law Association, a founding master and officer of the Q. Todd Dickinson Inn of Court and is the current chair of the ACBA Civil Litigation Section. Cecilia can be reached at firstname.lastname@example.org, (412) 471-8815.