By now, everyone has heard about the decision cancelling six Washington Redskins trademark registrations because the word “REDSKINS” disparaged Native Americans. How did this happen, and what does it mean?
On June 18, 2014 the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office granted the request of six Native American members of various tribes to cancel six REDSKINS trademarks owned by Pro-Football, Inc. for its professional football team, the Washington Redskins. The six marks, registered between 1967 and 1990 for football-related activities, all include the word REDSKINS (including REDSKINETTES, for the Redskins cheerleaders). In a 177-page opinion, the Board found that based on the evidence presented, a substantial composite of Native Americans felt that the word REDSKINS referred not just to a football team, but was also disparaging reference to their ethnic group, and that the term was disparaging at the times these marks were registered.
This is not the first time this issue has come up. These same six registrations were cancelled by the TTAB in 1999 in an earlier case filed by a different group of Native Americans. Harjo v. Pro-Football, Inc., 50 U.S.P.Q. 2nd 1705 (TTAB 1999). In that case, the Board’s decision was overturned on appeal when the D.C. appellate court ultimately found that those plaintiffs had waited too long after they reached age 18 to file the action, and therefore it was barred by laches. 565 F.3d 880 (D.C. Cir. 2009). The substantive issue of disparagement was thus never addressed in the final appeal.
Presented with exactly the same evidence as in the earlier case, the Board was again asked to decide whether the REDSKINS trademarks should be cancelled under §2(a) of the Lanham Act, 15 U.S.C. §1052(a), which prohibits the registration of marks that may disparage persons or bring them into contempt or disrepute. The test for making this determination involves a two-step inquiry:
- What is the meaning of the particular term, as it appears in the mark and as that mark is used in connection with the goods and services identified in the registration?
- Is that meaning disparaging to a substantial composite (which is not necessarily a majority) of the group identified by the particular term?
In answering the first part of the disparagement test, the Board in its 2014 decision held that the evidence overwhelmingly supported a determination that the term “redskins” in the trademarks retained its core meaning of “Native Americans,” when used as the name of the football team, and that its use to refer to the team had not displaced its “ethnic” meaning. The Board found as a matter of fact that the word “on its face is and always has been a racial designation,” referring to “the real or imagined skin color of Native Americans.”
As for the second part of the test, the Board concluded that the term “redskins” was disparaging to a substantial composite of Native Americans during the relevant time period of 1967-1990. It based its decision on dictionary definitions, which since the mid-1960s had begun identifying the term as “often offensive,” and on the simultaneous marked decrease in media usage of the term. In addition, the Board was persuaded by a 1993 resolution adopted by an intertribal organization of Native Americans stating that:
The term REDSKINS is not and has never been one of honor and respect, but instead has always been and continues to be a pejorative, derogatory, denigrating, offensive, scandalous, contemptuous, disreputable, disparaging and racist designation for Native Americans.
The Board found this proclamation to reflect the views of at least 30% of Native Americans during the relevant time period.
Evidence that some Native Americans did not find the term offensive did not change the outcome. And so the Board cancelled the six registrations. The dissent argued strenuously in a detailed opinion that the evidence in the case did not support the majority’s findings.
What else is disparaging?
This is also not the first case to conclude that a trademark is too disparaging for registration. In recent years, the Board has affirmed the examiner’s refusal to register at least two marks under §2(a) on the grounds that they disparaged a substantial composite of the groups they identified. In In re Heeb Media, 89 U.S.P.Q. 2d 1071(TTAB 2008), Heeb Media, the publisher of Heeb magazine, a self-consciously ironically-titled journal directed to the Jewish community, filed an application to register HEEB for clothing. The mark was refused registration, and the Board upheld the refusal, despite neutral dictionary definitions and statements from Jewish organizations that they did not find the term offensive. The Board said it was “clear that, at a minimum, among the older generation of Jews the term retains its negative meaning,” …and that that population constituted a “substantial composite.”
And in a nonprecedential decision last year, the Board similarly affirmed the examiner’s refusal to register the mark STOP THE ISLAMICIZATION OF AMERICA in connection with “providing information regarding understanding and preventing terrorism.” In re Pamela Geller, Serial No. 77940879 (2013). The Board found that the mark created a direct association between Muslims and terrorism, and that “the majority of Muslims are not terrorists and are offended by being associated as such.” That decision was affirmed earlier this year by the Federal Circuit. In re Geller, 751 F.3d 1355 (Fed. Cir. 2014).
What does it mean for the Washington Redskins?
Not much. Up until now the team has remained adamant that it should not be forced to change its name, which team owner David Snyder has called “a badge of honor.” Of course the team said it will appeal the TTAB’s decision, though now, because of a change in the law, the appeal will be to the federal court in the Eastern District of Virginia, rather than in Washington. But even if these six registrations are eventually cancelled permanently, it won’t make much difference to the football team or its fans. Despite the hysteria in the media about this decision (much ado about how “political correctness” is endangering our beloved institutions), nothing is likely to change, at least in the immediate future. The registrations will remain alive while the appeal is pending, which will likely take several years. And in any event, the case affects only the team’s trademark registrations, and nothing else. Pro-Football may continue to use the name, to sell REDSKINS merchandise, to license the use of the name for a wide variety of goods and services, to continue to collect its substantial royalties, to enforce its rights against infringers, and to sue in court. None of this will be affected, even if the case is ultimately affirmed by the U.S. Supreme Court. But still, the question must be asked: How long can the team ignore the public’s changing sensibilities over time? At some point, will the name be thought of in the same way as the old trademark registration (in effect until 1966) for NIGGER BABY BRAND for an Orlando fruit packing company?
By the way, to answer the question raised in the title, there should be no threat to FSU’s use of the name SEMINOLES. The Seminole Tribes of Florida’s Tribal Council issued a resolution in 2005 confirming that the “Seminole Tribe of Florida has an established relationship with Florida State University, which includes its permission to use the name ‘Seminole,’ as well as various symbols and images, such as Chief Osceola, for educational purposes, and the Seminole Tribe of Florida wishes to go on record that it has not opposed, and in fact, supports the continued use of the name ‘Seminole.’”
Update: On August 14, 2014 the Redskins appealed the TTAB decision canceling their trademark registrations by filing a lawsuit in the federal district court in Alexandria, Virginia seeking review under §1071(b)(c). The complaint asserts that the Board’s conclusions were wrong, and in fact, Native Americans did not consider the name Washington Redskins to be disparaging in 1967-1990. The Redskins also argue that the TTAB’s action in canceling their REDSKINS trademarks violates both their First Amendment right of free speech as well as their Fifth Amendment right of due process not to be deprived of their valuable intellectual property. While the court case is pending, the six REDSKINS registrations will remain in force.
Further update: On November 25, 2014, the district court denied the motion to dismiss filed by the Native American defendants in the court case (they were the petitioners in the case before the TTAB). The court found that the 5 remaining Native Americans had a sufficient interest in the case to establish jurisdiction, and so allowed the case against them to go ahead.