Divided TTAB Panel Cancels Six REDSKINS Trademarks on Disparagement Grounds

Author: Morgan E. Smith

In a high-profile precedential decision, a divided TTAB panel cancelled six REDSKINS trademarks for various entertainment services including professional football contests and cheerleading because the marks contained matter which may disparage a substantial composite of Native Americans. After conspicuously noting that its decision affected registration, not use, of the REDSKINS marks, the Board recounted the first, decades-long challenge to the marks, begun in 1992 and culminating in a D.C. Circuit Court of Appeals’ decision that laches barred the petitioners’ claims. Pro-Football, Inc. v. Harjo, 90 USPQ2d 1593 (D.C. Cir. 2009). The Blackhorse petitioners filed this cancellation proceeding while Harjo was pending and focused their claim on whether the term REDSKIN was disparaging to Native Americans.

The test for disparagement in this case was two-pronged: “(a) 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] (b) Is the meaning of the marks one that may disparage Native Americans?” Both questions were answered as of the various dates the marks were registered, considering the views of Native Americans, not the American public as a whole. The Board also noted that a “substantial composite” is not necessarily a majority of the referenced group.

With regard to the first prong, Pro-Football argued that the term REDSKINS now has a separate meaning—the name of a football team. But this meaning did not affect the Board’s analysis of the “meaning of the matter in question.” The Board examined the Redskins logo, marching band and Redskinette costumes, and Washington Redskin press guides to determine that Pro-Football “made continuous efforts to associate its football services with Native American imagery.” Therefore, REDSKINS, as used in connection with professional football, retained its Native American meaning.

Turning to the second prong, the Board noted that use of a mark in context with certain goods or services can (1) render an innocuous term disparaging (KHORAN used for wine disparages American Muslims), (2) strip the disparaging meaning from an otherwise disparaging term (Squaw Valley used on ski-related goods relates to the geographic location rather than Native American women), or (3) have no effect on a term’s disparaging meaning (racial slurs or similar pejorative, derogatory terms). Because REDSKINS kept its Native American meaning when used in connection with football services, it did not belong in the second category. Petitioners argued, and the Board agreed, that REDSKINS, as a racial slur, belonged in the third, rather than first, category.

The Board considered many dictionary definitions listing REDSKIN as offensive or disparaging and its marked disappearance from written and most spoken language in the mid-1960’s to conclude that REDSKIN was disparaging during the relevant time period of 1967-1990. The Board also considered a resolution passed by the National Congress of American Indians (NCAI) in 1993 regarding the “pejorative, derogatory, denigrating, offensive, scandalous, contemptuous, disreputable, disparaging and racist” nature of the term REDSKIN. Even though the resolution was passed after 1990, the group’s prior efforts to change the Washington Redskins’ name, together with the resolution, evidenced that Native Americans found the term disparaging during the relevant time period. Because deposition testimony and newspaper articles showed that NCAI represented approximately thirty percent of Native Americans from 1967-1990, the Board concluded that a substantial composite of Native Americans found the term REDSKIN disparaging.

The dissent took issue with the sufficiency of the evidence supporting the petitioners’ claims, noting that the expert testimony did not involve the Native American viewpoint of the term REDSKIN. The dissent also pointed to several examples of Native Americans using REDSKIN in connection with football, noting that “the context in which ‘Redskin’ is used changes the perception of the term.” Finally, the dissent did not find the dictionary evidence convincing and gave little probative value to the evidence establishing that NCAI represented a “substantial composite” of Native Americans during the relevant time period.

For more discussion on the import of this decision, listen to the podcast recording featuring Mark Sommers.

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

Tagged , , , , , ,

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: