June 26, 2014
Federal law prohibits the registration of trademarks that contain disparaging, scandalous, contemptuous, or disreputable language. As previously reported, on June 18, 2014, in Blackhorse et al. v. Pro-Football, Inc., the U.S. Patent and Trademark Office canceled six federal trademark registrations held by the Washington Redskins football team, ruling that the marks were “disparaging to Native Americans” at the time they were registered. All of the marks contain the term “Redskins.”
The Redskins team registered the six marks in question between 1967 and 1990. In 1992, a group of Native Americans filed a petition to cancel the same six registrations at issue in the present case. That challenge was premised on the ground the marks consist of or comprise matter that disparages Native American persons. After seven years of proceedings, the Trademark Trial and Appeal Board (TTAB) concluded that these marks were disparaging to Native Americans when registered, and ordered the registrations canceled. Eventually, in Pro-Football, Inc. v. Harjo, the District of Columbia Circuit sided with the team, concluding that some of the plaintiffs had waited too long to bring suit. The D.C. Circuit, however, did not address the merits of the challenge.
While that earlier case was pending, six new individual petitioners filed a petition to cancel the same registrations for the REDSKINS marks. Proceedings were suspended pending the disposition of the earlier civil action, and were resumed in March of 2010. This case was heard before the TTAB on March 7, 2013.
In a 2–1 ruling that included a lengthy dissent, the TTAB ruled that the petitioners had proved that the term “Redskins” was disparaging to “a substantial composite” of Native Americans when the six marks were registered. The TTAB first determined “the term ‘redskin(s)’ as used by respondent in its registered marks when used in connection with professional football retains the ‘likely meaning’ Native Americans.” They then determined that “at a minimum, approximately thirty percent of Native Americans found the term REDSKINS used in connection with respondent’s services to be disparaging at all times.” “Thirty percent,” the TTAB stated, “is without doubt a substantial composite.” Based on this analysis, the TTAB ordered cancellation of the registrations.
The TTAB’s ruling does not prevent the team from continuing to use the trademarks. The TTAB determines only whether a mark can be registered with the federal government and not whether the owner may use the mark. An appeal is expected and the registrations will remain effective while the case is on appeal.
The TTAB’s decision to cancel the Washington Redskin’s trademark registrations, if affirmed, may affect other sports team mascots and the registrability of associated trademarks. Fitch Even attorneys will be monitoring any appeal of this case and plan to report on future developments. We express no opinion on the merits of the TTAB’s decision or the likelihood of reversal on appeal.
For more information on this decision, please contact Fitch Even partner Joseph T. Nabor.
--Written by Fitch Even attorney Brett J. Smith
Fitch Even IP Alert®