Washington Redskins Training Camp August 4, 2011. (Photo: Keith Allison, via Wikimedia Commons)
Ruling that the term “Redskin” is disparaging to Native Americans, a divided panel of three administrative law judges from the U.S. Patent and Trademark Office on Wednesday canceled six of the National Football League team’s trademarks.
The majority ruled that the Washington Redskins’ trademark registrations “must be canceled” because the term Redskin was seen as offensive by a substantial number of Native Americans as long ago as 1967, when the first of the trademarks was issued.
“This racial designation based on skin color is disparaging to Native Americans,” wrote Trademark Trial and Appeal Board Administrative Trademark Judge Karen Kuhlke, who was joined by Peter Cataldo. Trademark Judge Marc Bergsman dissented. The trademark board in March 2013 heard arguments over the trademark.
“The board ruled that the Trademark Office should never have registered these trademarks in the first place,” said Jesse Witten, a partner at Drinker Biddle & Reath who represented the five Native American petitioners. “We presented a wide variety of evidence—including dictionary definitions and other reference works, newspaper clippings, movie clips, scholarly articles, expert linguist testimony, and evidence of the historic opposition by Native American groups—to demonstrate that the word ‘redskin’ is an ethnic slur.”
Robert Raskopf, Claudia Bogdanos and Todd Anten of Quinn Emanuel Urquhart & Sullivan represented the football team in the dispute.
“We’ve seen this story before. And just like last time, today’s ruling will have no effect at all on the team’s ownership of and right to use the Redskins name and logo,” Raskopf said in a written statement. The attorneys said they are “confident we will prevail once again, and that the Trademark Trial and Appeal Board’s divided ruling will be overturned on appeal.”
If the decision stands, it won’t bar the team, which is owned by Daniel Snyder, from using the trademark.
But the team’s ability to “stop others from using the name or to force licensing of the name in all situations would be severely curtailed, which would cut into both the team’s profit margin and its ability to choose the products and services with which the team and its name are associated,” said Reed Smith trademark litigator Brad Newberg in an email. “This could be close to the final straw in forcing the NFL and Daniel Snyder to change the name of the team.”
The decision is not a carte blanche for anyone to start selling Redskins T-shirts, said Mark Sommers, a partner at Finnegan, Henderson, Farabow, Garrett & Dunner.
“Given the newsworthy nature of this decision, the board expressly noted at the outset of the opinion that its decision concerns only the ‘statutory right to register’ the Redskins mark and that it lacked the statutory authority to determine the ‘right to use’ the Redskins name,” he said. “As such, one of the main takeaways from this decision is that Redskins are not required to stop using their name and that third parties have not been gifted the opportunity to start freely selling Redskins merchandise.”
THE FIGHT IN COURT
It’s not the first the first time the patent office has dealt with the issue. In 1992, seven Native Americans filed a petition to cancel the same six trademarks that use the term “redskins.”
The board in 1999 held that the marks were disparaging and canceled them, only to be reversed by U.S. District Court for the District of Columbia.
On appeal, the U.S. Court of Appeals for the D.C. Circuit examined the law that allows cancellation of a registration “at any time” if the trademark comprises “matter which may disparage … persons, living or dead … or bring them into contempt, or disrepute.” But the appellate court held that the law did not apply to this trademark and that the trademark challenge had been filed too late.
The challengers then turned to the U.S. Supreme Court where the issue was “laches,” unreasonable delay in pursuing a claim. The justices denied review in late 2009 without comment.
The America Invents Act changed the forum for judicial review of the trademark board’s decision. The football team can appeal to the U.S. District Court for the Eastern District of Virginia, where it can further develop the record and introduce new evidence or the U.S. Court of Appeals for the Federal Circuit, where the record will remain as-is. The case will not go back to the D.C. Circuit.
The name and logo were adopted in 1933 when the team, then known as the Braves, was based in Boston. In the Supreme Court case, the team said the name was changed to honor its coach, William Henry “Lone Star” Dietz, a Native American.
The current case, Blackhorse v. Pro-Football Inc., is very similar to the prior one, Harjo v. Pro-Football Inc. The Blackhorse parties challenged the same marks on the same grounds and agreed with a few exceptions to submit the entire Harjo record into evidence, including deposition transcripts and exhibits.
In his dissent Wednesday, Bergsman argued that the evidence still falls short.
“The new petitioners re-submitted most of the same evidence that the Harjo petitioners submitted—evidence which the district court previously ruled was insufficient to support an order to cancel the challenged registrations as disparaging,” he wrote. “Nor has the passage of time aided what could be described as a stale record.”
Bergsman continued: “I am not suggesting that the term ‘redskins’ was not disparaging in 1967, 1974, 1978 and 1990 (the registration dates at issue). Rather, my conclusion is that the evidence petitioners put forth fails to show that it was.”
The majority asserted that the new proceeding “presents significant differences from the first,” and is narrower in scope. “The statutory requirement to remove disparaging matter from the register is not obfuscated in the present case by peripheral issues.”
The test for disparagement has two parts: What did the trademark mean at the time of its registration, and was its meaning offensive at that time “not to the American public as a whole, but to the views of the referenced group.”
That “redskins” referred to Native Americans is “overwhelmingly” support by the evidence, the trademark panel found. As for whether the term was disparaging at the time of registration, the majority found “many examples use the term in the context of racial slurs or discrimination.” They also noted that its usage has dropped off sharply (in a nonsports context) since 1967.
The judges also considered a resolution passed in 1993 by the National Congress of American Indians calling the term “pejorative, derogatory, denigrating, offensive, scandalous, contemptuous, disreputable, disparaging and racist.” The majority found that while the statement came three years after the relevant time period of 1967 to 1990, it represented the “past and ongoing viewpoint” of many Native Americans.
The majority also rejected the argument that the football team has given the term “redskins” a secondary or alternate meaning that strips it of its ethnic connotations, much like the board’s holding that Squaw Valley Ski Resort refers to a geographic location and does not retain the meaning of a Native American woman. The term “redskin,” the majority said, “retains the core meaning Native American when used as the name of respondent’s sports team.”
Contact Jenna Greene at firstname.lastname@example.org. Marcia Coyle contributed to this report.
Updated at 2:02 p.m.