• Trademark Board Cancels "Redskins" Registrations
  • September 1, 2014 | Author: Timothy J. Lockhart
  • Law Firm: Willcox & Savage, P.C. - Norfolk Office
  • In the latest battle in a long-running war involving trademarks used by the Washington Redskins football team, the U.S. Trademark Trial and Appeal Board (TTAB) canceled six registrations for the team’s REDSKINS marks. Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, & Courtney Tsotigh v. Pro-Football, Inc., 2014 WL 2757516, 111 U.S.P.Q.2d 1080 (T.T.A.B. 2014) [precedential]. In its 2-1 decision the TTAB found that the REDSKINS marks are disparaging to Native Americans under Section 2(a) of the Trademark Act, 15 U.SC. § 1052(a).

    This decision resulted from the second petition to cancel the registrations. In 1992 Suzan Harjo and six other Native Americans filed the first petition for cancellation. After years of litigation the TTAB ruled that the REDSKINS marks were disparaging and ordered the registrations canceled. On appeal the U.S. District Court for the District of Columbia reversed the TTAB’s decision, holding that the finding of disparagement was not supported by substantial evidence and that the doctrine of laches, or unreasonable delay, precluded consideration of the case.

    On further appeal the U.S. Court of Appeals for the D.C. Circuit, affirming the lower court’s ruling, stated that the Native Americans argued “only that the District Court improperly assessed evidence of prejudice in applying laches to the facts at issue” and limited its decision “to that question.” Pro-Football, Inc. v. Harjo, 565 F.3d 880, 882 (D.C. Cir. 2009). Thus, the D.C. Circuit resolved the case solely on the issue of laches, not addressing the TTAB’s finding of disparagement on the merits.

    While the Harjo litigation was pending, six new plaintiffs filed a second petition to cancel the same REDSKINS registrations. In March 2011 the parties to the new litigation stipulated that essentially the entire Harjo record could be entered into evidence through a Notice of Reliance.

    In its recent decision the TTAB reiterated that the test for disparagement is a two-step inquiry: first, what is the meaning of REDSKINS as it appears in the marks and are those marks used in connection with the goods and services identified in the registrations; and second, is the meaning of the marks one that may disparage Native Americans? The TTAB said that both questions were to be answered as of the various registration dates and that with respect to the second question, the TTAB looked not to the American public as a whole but rather to the views of Native Americans.

    The TTAB held that REDSKINS clearly refers to Native Americans. Noting the Native American imagery in two of the marks, on the team’s uniforms, and in its press materials, the TTAB also held that REDSKINS makes that reference to Native Americans as used with the goods and services listed in the registrations.

    In finding REDSKINS to be derogatory the TTAB relied on factual evidence consisting of linguistic experts’ reports, dictionary definitions, and the use of the word in various media such as movies, novels, histories, and news reports. The TTAB also relied on a resolution passed by the Executive Council of the National Congress of American Indians (NCAI) that claimed “the term REDSKINS . . . has always been and continues to be a pejorative, derogatory, denigrating, offensive, scandalous, contemptuous, disreputable, disparaging and racist designation” for Native Americans. Although Pro-Football objected to the resolution as irrelevant because it was not passed until 1993, the TTAB overruled the objection, saying the resolution nevertheless represented the views of Native Americans when the REDSKINS marks were registered.

    In addition, the TTAB relied on depositions of officials of the NCAI and the Indian Legal Information Development Service and on over 20 letters of protest from individual Native Americans or Native American organizations. (The TTAB did not rely on the over 150 letters of protest received from non-Native Americans.)

    Pro-Football submitted evidence that REDSKINS is not derogatory, including statements by Native Americans and evidence that some Native Americans have used “redskins” in connection with their own sports teams. The TTAB considered this evidence, but the TTAB’s discussion of it is much shorter than its lengthy analysis of the opposing evidence.

    The TTAB then reached 39 findings of fact, including that “[b]eginning in 1966 and continuing to 1990, usage labels in dictionaries indicating the term REDSKIN to be offensive, disparaging, contemptuous or not preferred, first appear and then grow in number.” The TTAB also found that “[f]rom the mid-1960’s to 1996, the word ‘redskin(s)’ has dropped out of written and most spoken language as a reference to Native Americans” and that “the use of the word redskin(s) disappears because it is increasingly recognized that the term is offensive and disparaging during the relevant time period as Native Americans raise awareness about the offensive nature of the term redskin(s).” Accordingly, the TTAB held that because “a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with [Pro-Football’s] services during the relevant time frame of 1967-1990,” the six registrations at issue should be canceled.

    The TTAB also held that Pro-Football’s laches defense was not applicable. The TTAB said that “laches does not apply to a disparagement claim where the disparagement pertains to a group of which the individual plaintiff or plaintiffs simply comprise one or more members.” Because “plaintiffs are created every day as individual members of the referenced group mature to age 18,” the TTAB said, “the laches defense will never yield the registrant of a racial slur the repose it seeks.” The TTAB added that five of the petitioners had turned 18 while the Harjo litigation was still pending and brought the instant cancellation proceeding soon enough thereafter that their delay was “minimal” and not “sufficient to support laches.”

    The dissenting TTAB judge said he disagreed with the decision “because the dictionary evidence relied upon by the majority is inconclusive and there is no reliable evidence to corroborate the membership of National Council of American Indians.” He stressed that the case was not about whether REDSKINS is disparaging to Native Americans today but rather, based on the evidence of record, whether “the term ‘redskins’ was disparaging to a substantial composite of Native Americans at the time each of the challenged registrations issued.”

    The judge noted that the petitioners had “made the decision to simply re-use the trial record from the previous Harjo litigation, without substantial augmentation,” and that the district court had previously found that evidence insufficient for cancellation. Accordingly, he said that “the evidence before the Board in this case remains insufficient as well.”

    His dissent, the judge said, was not meant to suggest “that the term ‘redskins’ was not disparaging in 1967, 1974, 1978, and 1990 (the registration dates at issue).” Rather, he said, his conclusion was that “the evidence petitioners put forth fails to show that it was.”

    Since the TTAB issued its decision a group of Redskins supporters has posted on the Internet a “Redskins Facts” site that takes issue with the TTAB’s factual findings and includes supporting statements from Native Americans. (The Washington Post has questioned some of the purported facts on the site.) Pro-Football has stressed that the TTAB decision does not prevent the team from using the REDSKINS marks and has announced plans to appeal the decision.