Finding Disparagement, TTAB Orders Cancellation of Six REDSKINS Trademark Registrations | Practical Law

Finding Disparagement, TTAB Orders Cancellation of Six REDSKINS Trademark Registrations | Practical Law

In Blackhorse v. Pro-Football, Inc., the Trademark Trial and Appeal Board (TTAB) granted a petition to cancel six registrations comprising or containing the word REDSKINS, finding the marks were disparaging to Native Americans when the registrations were granted.

Finding Disparagement, TTAB Orders Cancellation of Six REDSKINS Trademark Registrations

by Practical Law Intellectual Property & Technology
Published on 20 Jun 2014 • USA (National/Federal)
In Blackhorse v. Pro-Football, Inc., the Trademark Trial and Appeal Board (TTAB) granted a petition to cancel six registrations comprising or containing the word REDSKINS, finding the marks were disparaging to Native Americans when the registrations were granted.
On June 18, 2014, in Blackhorse, et al v. Pro-Football, Inc., the Trademark Trial and Appeal Board (TTAB or Board) issued a precedential decision granting a petition to cancel Pro-Football, Inc.'s six federal trademark registrations for marks comprised of or containing the word REDSKINS, finding the marks were disparaging to Native Americans when they were registered (Cancellation No. 9204618, (TTAB June 18, 2014)).

Background

Between 1967 and 1990, Pro-Football registered six marks, including THE REDSKINS, WASHINGTON REDSKINS, and REDSKINETTES (collectively, REDSKINS marks), for entertainment services, particularly presentations of football contests.

Harjo Litigation

In 1992, Suzan Harjo and six other Native Americans filed a petition to cancel the registrations for the REDSKINS marks, arguing the marks were barred from registration by Section 2(a) of the Lanham Act because they:
  • Consisted of or comprised matter which disparaged Native Americans and brought that group of people into contempt, ridicule or disrepute.
  • Comprised scandalous matter.
(15 U.S.C. § 1052(a).)
Pro-Football denied the allegations in the cancellation petition and asserted laches as an affirmative defense. After seven years of litigation, the TTAB granted Harjo's petition, holding the REDSKINS marks were disparaging to Native Americans when registered, and ordered the marks cancelled. Pro-Football appealed the decision to the US District Court for the District of Columbia, which reversed the TTAB's decision, holding:
  • The TTAB's finding of disparagement was not supported by substantial evidence.
  • The doctrine of laches barred consideration of the merits of the case.
(Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96 (D.D.C. 2003).)
On appeal, the US Court of Appeals for the District of Columbia Circuit held that the district court applied the wrong standard in evaluating the laches defense, finding the laches defense runs only from the time a party has reached his majority, and remanded the record to the district court to determine whether laches barred one of the petitioner's claims (Pro-Football, Inc. v. Harjo, 415 F.3d 44 (D.C. Cir. 2005)). On remand, the district court found that laches did bar the claim (Pro-Football, Inc. v. Harjo, 567 F. Supp. 2d 46 (D.D.C. 2008)). Harjo, again, appealed. The DC Circuit affirmed the district court on the issue of laches and noted that Harjo's appeal was limited to the application of laches to the facts at issue (Pro-Football, Inc. v. Harjo, 565 F.3d 880 (D.C. Cir. 2009)).

Outcome

Blackhorse Litigation

While the Harjo litigation was pending, Amanda Blackhorse and four other Native Americans filed the instant petition, seeking to cancel the same registrations for the REDSKINS marks. These proceedings were suspended pending the disposition of the Harjo litigation, and were resumed in March 2010.
In March 2011, the Blackhorse petitioners and Pro-Football agreed and stipulated to submit the entire Harjo record into evidence through a Notice of Reliance. The parties agreed that all evidence, deposition transcripts and exhibits would be admissible unless the Harjo Board had ruled the evidence inadmissible.
Before reaching the merits of petitioners' claims, the TTAB first determined that the Blackhorse petitioners had standing to bring the petition because each petitioner testified that they:
  • Were a member of a Native American tribe.
  • Considered the term REDSKIN to be disparaging or derogatory and offensive.
Accordingly, the TTAB concluded that each petitioner had established a real interest and personal stake in the outcome of the proceeding, and therefore the standing requirement was met.

Disparagement Analysis

In considering the petitioners' claims, the TTAB identified the two-pronged analysis for disparagement under Section 2(a) of the Lanham Act:
  • 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?
  • Is the meaning of the marks one that may disparage Native Americans?
The TTAB was satisfied that the Harjo evidence established the first prong of the disparagement test in that:
  • The disparagement claim pertains to the term REDSKINS.
  • REDSKINS refers to Pro-Football's professional football team.
  • As it appears in the marks, the term REDSKINS alludes to Native Americans. In particular, two of the registrations include Native American imagery:
    • the Washington Redskins marching band wore Native American headdresses as part of their uniforms between the 1960s and the 1990s; and
    • the Washington Redskin press guides displayed Native American and teepee imagery on the front cover between 1967 and 1979.
  • The term REDSKINS means Native Americans even when used in connection with Pro-Football's goods and services.
Turning to the second prong, the TTAB considered whether the term REDSKINS was disparaging at the time of registration. The TTAB focused on a variety of evidence, including:
  • Dictionary definitions and reference books. The Harjo record included at least eight dictionary definitions of the word "redskin" from dictionaries like Random House Dictionary of the English Language, World Book Dictionary and Oxford American Dictionary. The definitions, which were contemporary to the relevant time period, generally included a usage label that advised the user that the term was "often offensive" or "not preferred." The TTAB considered the usage labels that identify the term as offensive as support for the conclusion that the term is disparaging under Section 2(a).
  • The National Congress of American Indians' (NCAI) 1993 Resolution 93-11. Through the NCAI Resolution in Support of the Petition for Cancellation of the Registered Service Marks of the Washington Redskins AKA Pro-Football, Inc. (NCAI Resolution), the NCAI took the position that the term REDSKINS has always been, and continued to be, a pejorative, derogatory and offensive term for Native Americans and that Pro-Football's registered service marks were and continued to be offensive, disparaging, scandalous and damaging to Native Americans. The TTAB rejected Pro-Football's claims that the resolution was irrelevant because it was dated after the relevant time period. The TTAB found the resolution, which was passed by an organization that represented approximately 30% of Native Americans, was clearly probative of the views of Native Americans held during the referenced time period.
  • The deposition of NCAI Executive Director JoAnn Chase. Chase was Executive Director of the NCAI in the 1990s and provided testimony about the NCAI Resolution. The TTAB determined that her testimony specifically addressed the time period with which it was concerned and provided contemporary and historical background on the NCAI.
  • The Deposition of Harold Martin Gross. Gross was the Director of Indian Legal Information Service, a legislative oversight program. Gross testified that in 1972 he and ten other representatives from various Native American organizations, including NCAI, met with the then-part-owner and president of the Washington Redskins, where the Native Americans expressed their reasons for objecting to the name of the team and why they thought it should be changed. The TTAB rejected Pro-Football's objections to Gross' testimony, instead finding the testimony showed that NCAI's opposition to the word "redskins" existed as early as 1972, well before NCAI's 1993 resolution.
  • A variety of newspaper articles, reports, official records and letters. The Harjo record also contained 19 letters of protest from individuals who identified themselves or family members as Native Americans, all but one of which were written at the end of or just after the relevant time period. The letters protest the use of the term REDSKINS by Pro-Football. In addition, the record includes newspaper articles and letters that Pro-Football argued showed support for the term.
After considering the evidence, the TTAB concluded, among other things:
  • The term REDSKINS was a racial designation.
  • During the relevant time period, usage labels appeared on definitions of the term REDSKINS because it was increasingly recognized that the term is offensive and disparaging to Native Americans.
  • NCAI has been in existence since 1944 and from 1972 to 1993, it represented approximately one-third of the Native American population.
  • NCAI objected to the use of the term REDSKINS in the late 1960s, 1972, 1988, 1992 and 1993.
The TTAB then turned to the second prong, which asks whether a substantial composite of Native Americans would have found the term disparaging at the time of the registration. Despite Pro-Football's arguments to the contrary, the TTAB concluded the record established that, at a minimum, approximately 30% of Native Americans found the term disparaging during the relevant time period, and that 30% was enough to qualify as a substantial composite. Accordingly, it determined that the six registrations must be cancelled as required under Section 2(a).

Laches Defense

The TTAB reconsidered Pro-Football's laches affirmative defense and determined it does not apply because there is a broader public policy concern at issue. Not only did Pro-Football fail to show that the Blackhorse petitioners unreasonably delayed in bringing their petition, there is an overriding public interest in removing from the trademark register marks that are disparaging to a segment of the population.

Dissent

Administrative Trademark Judge Bergsman dissented because, in his estimation:
  • The dictionary evidence relied on by the majority was inconclusive.
  • There was no reliable evidence to corroborate the membership of NCAI.

Practical Implications

This decision shows in detail the types of evidence the TTAB may consider in a disparagement case. The decision also illustrates the limits of the TTAB's authority. Contrary to news reports about the Washington Redskins "losing" the REDSKINS marks and no longer being able to enforce them, the TTAB decision, which will undoubtedly be appealed, is limited to ordering the cancellation of the six trademark registrations at issue. It has no impact on the Redskins' ability to use the REDSKINS marks, nor does it preclude the Redskins from enforcing the marks through the common law rights the team has built up through years of use in the marketplace.