Instead of “Hail to the Redskins” –the traditional fight song of the Washington Redskins Football Team – it has been “hailing on the Redskins” at the U.S. Trademark Office. On June 18, 2014, the Trademark Trial and Appeal Board (TTAB) ordered the cancellation of federal trademark registrations for six REDSKINS marks. Blackhorse v. Pro-Football, Inc. (TTAB Cancellation No. 92046185).
The TTAB held that the six trademark registrations should be cancelled because the REDSKINS mark is disparaging to Native Americans and thus violates Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), which prohibits registration of trademarks that consist of “immoral, deceptive, or scandalous matter; or matter which may disparage … persons, … institutions, beliefs, or national symbols.” The prohibition on registering a “disparaging” term as a federal trademark is a statutory condition that was added by Congress—reportedly not as an attempt to legislate morality or “pc” conduct, but as a judgment by the Congress that federal funds should not support the maintenance of scandalous or disparaging marks. The TTAB held that “redskins” is a racial slur that was disparaging to “a substantial composite” of Native Americans at the time of registration (which is the relevant timeframe).
The TTAB’s decision is NOT the final word on the REDSKINS trademarks. The team immediately declared that it would appeal, noting that the TTAB had reached a similar conclusion years ago in a 1999 case that was later reversed on appeal. The team contends that the REDSKINS marks are historical insignias honoring Native Americans. The team has sixty days from the decision to seek further judicial review, either by appealing to the Federal Circuit or by filing a civil action in the Eastern District of Virginia.
Nor does the TTAB decision mean that the team has lost the right to use its REDSKINS marks. Press reports suggesting that anyone may now sell REDSKINS logo sweatshirts and other items are flatly wrong. If the TTAB decision is affirmed, the Washington Redskins team will lose the benefits of federal trademark registration, including immunity to cancellation proceedings, nationwide rights and the ability to record registrations with Customs to block the importation of infringing items. But even if the cancellation decision is affirmed, the team still owns enforceable common law rights in the REDSKINS marks. Moreover, the team could still seek to enforce its common law trademark rights in court, including in federal court under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). One thing is certain: the REDSKINS issue is far from settled.
The controversy over the REDSKINS mark highlights the problems that a brand owner may face when a mark conjures negative associations and nuances. Traditionally, much of the value of a brand lies in its “goodwill” – the positive aura of quality and competence associated with the mark. In the debate over the REDSKINS marks, many critics have questioned the continuing value of that marks’ goodwill. The TTAB case is but one chapter in this ongoing saga, one which will now go to the federal court for further judicial review.
[1] Harjo v. Pro Football, Inc., 50 USPQ2d 1705 (TTAB 1999), rev’d, Pro Football, Inc. v. Harjo, 284 F. Supp.2d 96 (D.D.C. 2003); rev’d in part, 415 F.3d 44 (D.C. Cir. 2005); on remand, 567 F. Supp.46 (D.D.C. 2008); aff’d, 565 F.3d 880 (D.C. Cir. 2009) (upholding district court ruling that the claims of plaintiffs in that case were barred by laches), cert. denied, 558 U.S. 1025 (2009).
