Washington Redskins Skinned: Effect of The TTAB’s Cancellation

By Brent T. Yonehara

INTRODUCTION

There has been recent controversy regarding the use of the Washington Redskins trade name.[1] Today, the Trademark Trial and Appeal Board (TTAB) summarily cancelled six trademark registrations held by the Pro Football, Inc..[2] Many people, including President Obama, have objected to the continued use of the REDSKINS mark.[3] While there is an anticipated appeal of the TTAB decision, this ruling represents a major victory for Native Americans who see the term as a derogatory and racially offensive slur consistent with the Lanham Act’s Section 2(a) prohibition of disparaging marks.

DISCUSSION

The six service mark registrations at issue include:[4]

Mark	Registration No.	Class
THE REDSKINS (stylized)	0836122	entertainment services – namely, football exhibitions rendered in stadia and through the media of radio and television broadcasts, in Class 41
WASHINGTON REDSKINS	0978824	entertainment services – namely, presentations of professional football contests, in Class 41
WASHINGTON REDSKINS and design	0986668	entertainment services – namely, presentations of professional football contests, in Class 41
THE REDSKINS and design	0987127	entertainment services – namely, presentations of professional football contests, in Class 41
REDSKINS	1085092	entertainment services – namely, presentations of professional football contests, in Class 41
REDSKINETTES	1606810	entertainment services, namely, cheerleaders who perform dance routines at professional football games and exhibitions and other personal appearances, in Class 41

The petitioners in the cancellation proceeding were five Native Americans.[5] This proceeding was altogether separate from another lawsuit brought by another group of Native Americans against the Pro Football, Inc., the official name of The Washington Redskins organization.[6] In that very convoluted litigation, Harjo v. Pro Football, Inc., the petitioners raised a disparagement claim similar to the Blackhorse petitioners.[7] However, the Harjo case completed its circuitous judicial travails only dealing with procedural issues (and specifically the equitable defense of laches), and never addressed the underlying substantive trademark issue of disparagement.[8]

Trademark Claim of Disparagement

Historically, the term “redskin” meant a scalped head of a killed Native American, which, under the colonial English Phips Proclamation policy, was designed to eliminate existing Native American tribes as English colonists expanded their territorial reach in the Americas.[9]

Section 2(a) of the Lanham Act states that no trademark registration is allowed if it:

(a) consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . . [10]

The TTAB reviewed both historical context and expert testimony in determining whether REDSKINS was, in fact, “immoral, deceptive, or scandalous.” Consequently, it found that the term was a “racially designation,” referring to the skin color of Native Americans, and throughout modern history, the lexicon became known to be “offensive, disparaging, contemptuous or not preferred.”[11]   The TTAB, utilizing the “substantial composite” test,[12] determined that a substantial composite of Native Americans found the term “redskins” to be derogatory at the time of the registrations.[13] This evidence was enough for the TTAB to cancel the six Redskins service mark registrations.[14]

Effects of Cancellation

Currently, the TTAB ruling only strips federal trademark registration benefits, namely, allowing a trademark owner to sue alleged infringers under a number of federal trademark causes of action. The practical effect of the ruling is somewhat muted since it would mean anyone could, for example, sell merchandise with the REDSKINS logo and not face a trademark action under federal laws.[15]

However, this does not mean Pro Football does not have a remedy under common law or state trademark statutes.[16] Since Pro Football maintains a principal place of business in Virginia[17] and was incorporated in Maryland,[18] it could seek remedy under Virginia or Maryland trademark or common laws, since Pro Football owns state trademark registrations in Virginia and Maryland.[19] The legal judgments, if any, would be limited to the jurisdictions each respective state. Theoretically, the Blackhorse petitioners could also seek to cancel the state registrations.

Furthermore, Pro Football can also appeal the TTAB decision to the federal courts, which they will do, as expected.[20] This will open the door to an entirely new, and probably protracted, litigation proceeding with an unknown outcome.

On a related note, the TTAB ruling does not affect the domain name registration for “redskins.com,” which is owned by Pro Football.[21] A domain name cancellation would entail commencing a completely separate, administrative proceeding under the Uniform Dispute Resolution Policy (UDRP) through an ICANN registered administrative hearing body.[22] However, the Blackhorse petitioners may have a difficult case showing that redskins.com is confusingly similar, being used in bad faith, and which Pro Football does not have legitimate interests in REDSKINS.[23] Pro Football, though, would have some difficulty with its affirmative defense under the IP Defensive Registration conditions because of the cancelled federal registration.[24] In any case, it would be a lengthy, and quite expensive, endeavor.

CONCLUSION

The TTAB ruling is a victory for Native American history and culture, who have faced centuries of English, and later, American repression.[25] Recently, there has been a movement to address the offensive usages of the Native American persona in sports[26] and academia[27]. The ruling itself may be limited in certain legal scope and jurisdiction. However, symbolically, it represents a change in the public’s perception of the REDSKINS trademark, and more importantly, redress for the Native American people.

By Brent Yonehara. Originally published at http://yonaxis.blogspot.com/2014/06/washington-redskins-skinned-effect-of.html (June 18, 2014).

[1] See, e.g., Maya Rhodan, 50 Senators Demand Washington Redskins Change Their Name, Time, at http://time.com/108893/washington-redskins-name-senators/ (May 22, 2014).

[2] See Blackhorse et al. v. Pro Football, Inc., ___USPQ.2d___ (TTAB 2014), available at http://ttabvue.uspto.gov/ttabvue/v?pno=92046185&pty=CAN&eno=199 (last visited June 18, 2014).

[3] See Theresa Vargas & Annys Shin, President Obama says, ‘I’d think about changing’ name of Washington Redskins, The Washington Post, at http://www.washingtonpost.com/local/president-obama-says-id-think-about-changing-name-of-washington-redskins/2013/10/05/e170b914-2b70-11e3-8ade-a1f23cda135e_story.html (Oct. 5, 2013).

[4] See Blackhorse, supra note 2 at 2-4.

[5] Id. at 7. A sixth petitioner withdrew during the pendency of the cancellation proceeding. Id. at n.8.

[6] See Harjo v. Pro Football, Inc., 30 USPQ.2d 1828 (TTAB 1994), rev’d 284 F.Supp.2d 96 (D.D.C. 2003), rev’d 415 F.3d 44 (D.C. Cir. 2005), aff’d 565 F.3d 880 (D.C. Cir. 2009).

[7] See Harjo, supra note 5.

[8] See Blackhorse, supra note 2 at 6.

[9] See Baxter Holmes, A ‘Redskin’ is the Scalped Head of a Native American, Sold, Like a Pelt, for Cash, Esquire, at http://www.esquire.com/blogs/news/true-redskins-meaning (June 17, 2014); but see Dan Snyder, Letter from Washington Redskins Owner Dan Snyder to Fans, at http://www.washingtonpost.com/local/letter-from-washington-redskins-owner-dan-snyder-to-fans/2013/10/09/e7670ba0-30fe-11e3-8627-c5d7de0a046b_story.html (October 9, 2013) (“The name was never a label. It was, and continues to be, a badge of honor.”).

[10] See Lanham Act §2(a), 15 U.S.C. §1052(a), at http://www.bitlaw.com/source/15usc/1052.html.

[11] See Blackhorse, supra note 2 at 59-61.

[12] Determining whether a mark meets §2(a) requires that the views of the referenced group are “reasonably determined by the views of a substantial composite thereof (emphasis added).” See Pro-Football, Inc. v. Harjo, 284 F.Supp.2d 96, 144-145 (D.D.C. 2003). A substantial composite does not have to be a majority of the allegedly offended group. See In re Heeb Media LLC, 89 USPQ.2d 1071, 1074 (TTAB 2008). Additionally, the relevant viewpoint is not a majority but a substantial component of the general public in the context of contemporary attitudes. See In re Mavety Media Group Ltd., 33 F.3d 1367, 1382 (Fed. Cir. 1994).

[13] See Blackhorse, supra note 2 at 68.

[14] Id. at 72.

[15] See Erik Brady, How Will Pending Trademark Ruling Impact Redskins Name?, USA Today Sports, at http://www.usatoday.com/story/sports/nfl/redskins/2014/05/28/washington-redskins-mascot-controversy-trademark-daniel-snyder/9680563/ (May 28, 2014, 9:23 PM EDT).

[16] Id. See also Media Fact Sheet, USPTO TTAB Decision (Cancellation No. 92046185), at http://www.uspto.gov/news/USPTO_Official_Fact_Sheet_on_TTAB_decision_in_Blackhorse_v_Pro_Football_Inc.pdf (June 18, 2014).

[17] See State Corporation Commission Business Search database, Commonwealth of Virginia, at https://sccefile.scc.virginia.gov/Business/F024104 (last visited June 18, 2014) (Reg. No. F0241044, formation date of July 21, 1971).

[18] See Department of Assessments & Taxation, State of Maryland database, at http://sdatcert3.resiusa.org/UCC-Charter/DisplayEntity_b.aspx?EntityID=D00176966&EntityName=PRO-FOOTBALL%2c+INC.+++++++++++++++++++++++++++++++++++++++++&TabNum=1 (last visited June 18, 2014) (Dept. No. 300176966, formation date of December 4, 1936).

[19] See Division of Securities & Retail Franchising, Trademarks and Service Marks Registered in Virginia database, at https://www.scc.virginia.gov/srf/SERFWEB/RegistrationSearches/WebForms/Search.aspx?SearchType=TMSM (last visited June 18, 2014) (WASHINGTON REDSKINS, registered February 14, 1995, with first use date of July 31, 1972); Trademarks & Service Marks Database, Maryland Secretary of State, at http://www.sos.state.md.us/registrations/trademarks/TMSearch.aspx (last visited June 18, 2014) (11 separate registrations).

[20] See Frank Schwab, Washington Redskins Will Appeal Trademark Office Ruling Over ‘Disparaging’ Nickname, Yahoo Sports, at http://sports.yahoo.com/blogs/nfl-shutdown-corner/u-s–patent-and-trademark-office-cancels-washington-redskins–trademarks-144712305.html (June 18, 2014).

[21] See Whois database, at http://who.is/whois/redskins.com (last visited June 18, 2014) (redskins.com, registered through MarkMonitor, Inc., registered on July 29, 1996, and expiring on July 28, 2014).

[22] See generally ICANN, Uniform Domain Name Dispute Resolution Policy (UDRP), at https://www.icann.org/resources/pages/policy-2012-02-25-en (last visited June 18, 2014).

[23] See UDRP Rules §3(b)(ix)(1)-(3), at https://www.icann.org/resources/pages/rules-be-2012-02-25-en (last visited June 18, 2014).

[24] See UDRP Intellectual Property Defensive Registration Challenge Policy §4(b)(iii), at https://www.icann.org/resources/pages/ipdrcp-2012-02-25-en (last visited June 18, 2014) (“the trademark or service mark registration is of national effect” (emphasis added)).

[25] See generally Sarah Harding, Justifying Repatriation of Native American Cultural Property, 72 Ind.L.J. 723 (1997); Lenora Ledwon, Native American Life Stories and “Authorship”: Legal and Ethical Issues, 9 St. Thomas L. Rev. 69 (1996).

[26] See generally Ethan G. Zlotchew, “Scandalous” or “Disparaging”? It Should Make a Difference in Opposition and Cancellations Actions: Views on the Lanham Act’s Section 2(a) Prohibitions Using the Example of Native American Symbolism in Athletics, 22 Colum.-VLA J.L. & Arts 217 (1998); George Likourezos, A Case of First Impression: American Indians Seek Cancellation of Trademarked Term “Redskins”, 78 J. Pat. Trademark Off. Soc’y 275 (Apr. 1996).

[27] See generally Daniel J. Trainor, Native American Mascots, Schools, and the Title VI Hostile Environment, 1995 U. Ill. L.R. 971 (1995); Stanford Native American Cultural Center, The Removal of the Indian Mascot of Stanford, at http://nacc.stanford.edu/mascot.html (last visited June 18, 2014).