The USPTO Cancels the Redskins Trademark Registrations
The NFL football team, Washington Redskins, have six federally registered trademarks that include the term “redskins.”1 For over twenty years, there has been litigation seeking to cancel those registrations. Federal trademark law prohibits registered trademarks that consists 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. (15 U.S.C. § 1052(a)).
U.S. Patent and Trademarks Office’s Trademark Trial and Appeal Board (the “Board”) found the term “redskins” disparages Native Americans and the registrations must be cancelled. On Wednesday, July 8, 2015, the judge in the Eastern District of Virginia agreed.
In its decision, the Board noted that the test for disparagement comprises a two-step inquiry:
- 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 Board must look to the time of registration of the marks, not the current use. Also, the question of disparagement is one looked through the eyes of Native Americans, not the American public at large.
The Board found that the use of the mark in the context of a respondent’s goods or services is important to determine if the marks are disparaging. Such context can (1) turn an innocuous term into a disparaging one, (2) strip the disparaging meaning from an otherwise disparaging term, or (3) have no effect on a term’s disparaging meaning.
The Board noted that they could find no cases “where a term found to be a racial slur in general was found not to be disparaging when used in the context of specific services.” The Board did a thorough review of dictionary definitions, newspaper articles, expert testimony, letters and statements from Native Americans from across the country, resolutions from Native American associations, and even how the term was used in movies. They found that the facts to do not show an “innocent term” that when attached to specific the goods the term becomes disparaging (like when the term “Doughboy” on condoms was found to disparage soldiers2) or a term with two meanings, one of which is acceptable for certain goods or services (such as “Squaw Valley” on ski goods brings to mind the ski resort, not Native Americans3). Rather the term “redskins” retains its meaning “Native American” even when used with the football team’s services. So it then turned to the question if that term is disparaging.
When discussing whether or not the plaintiffs waited too long to file the cancellation, the Board stated “It is difficult to justify a balancing of equities where a registrant’s financial interest is weighed against human dignity.”
The Board found “that, at a minimum, approximately thirty percent of Native Americans found the term REDSKINS used in connection with [the football team’s] services to be disparaging.” Because the law prohibits registration of matter that disparages a “substantial composite, which need not be a majority, of the referenced group”, the Board found the marks disparaging and ordered cancellation of the mark.
The football team appealed to the Eastern District of Virginia (the “Court”) claiming such a finding violates their First Amendment rights to free speech. The Court found that the trademark registration program is not commercial speech (although a trademark is), but it is government speech. As such, the federal government can determine the content and limits of the programs it creates and manages. In other words, the government can say what kind of marks can and cannot be registered, and they said disparaging marks can’t be registered. Also, cancelling the mark does not prevent the football team from using the name, just registering it as a trademark.
In its review of whether or not the term was disparaging, the Court presented even more evidence of Native Americans’ feelings of hurt and examples of the term being used as a slur. The Court upheld the cancellation of the registrations.
However, this does not prevent the football team from using the marks, it just makes it hard for lawsuits to stop others from infringing the marks. Good news for counterfeiters, but still more work for Native Americans before the marks are no longer used in the NFL.
1 Registration No. 0836122 for the mark THE REDSKINS design for “entertainment services – namely, football exhibitions rendered in stadia and through the media of radio and television broadcasts,” in Class 41; Registration No. 0978824 for the mark WASHINGTON REDSKINS for “entertainment services – namely, presentations of professional football contests,” in Class 41; Registration No. 0986668 for the mark WASHINGTON REDSKINS and design, for “entertainment services – namely, presentations of professional football contests,” in Class 41; Registration No. 0987127 for the mark THE REDSKINS design for “entertainment services – namely, presentations of professional football contests” in Class 41; Registration No. 1085092 for the mark REDSKINS for “entertainment services – namely, presentations of professional football contests,” in Class 41; and Registration No. 1606810 for the mark REDSKINETTES, for “entertainment services, namely, cheerleaders who perform dance routines at professional football games and exhibitions and other personal appearances,” in Class 41.
2 Doughboy Industries, Inc. v. The Reese Chemical Co., 88 USPQ 227 (Exm’r in Chief 1951)
3 In re Squaw Valley Devpt. Co., 80 USPQ2d 1264 (TTAB 2006)
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