Five Native Americans brought a cancellation proceeding in the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office seeking to cancel six (6) “WASHINGTON REDKINS” registrations issued between 1967 and 1990 for professional football-related services on the ground that the registrations may disparage persons or bring them into contempt or disrepute.
The petitioners submitted two categories of evidence to prove that the term REDSKINS was disparaging during the relevant time periods: (1) a general analysis of the word such as the testimony and reports provided by the parties’ respective experts, dictionary definitions and reference books; and (2) the specific views of the referenced group such as the National Congress of American Indians’ (“NCAI”) 1993 Resolution 93-11, the depositions of the NCAI Executive Director and the Director of Indian Legal Information Development Service, and various newspaper articles, reports, official records and letters.
The TTAB found that the “record establishes that, at a minimum, approximately thirty percent of Native Americans found the term REDSKINS used in connection with respondent’s services to be disparaging at all times including 1967, 1972, 1974, 1978 and 1990”, the years of registration of the trademarks at issue. The evidence only had to show that a substantial composite, which need not be a majority, of the Native American population found the term ‘Redskins’ to be disparaging when the respective registrations issued. Therefore, the TTAB held that “petitioners have shown by a preponderance of the evidence that a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with respondent’s services during the relevant time frame of 1967-1990.”
A link to the decision can be found here.
Although the decision certainly diminishes the Washington Redskins’ rights in the marks, the cancellation of the registrations is essentially a symbolic move. Significantly, the decision does not force the team to change its name or logo. Rather, the decision concerns only the statutory right to registration of the trademarks as the PTO lacks statutory authority to issue rulings concerning the right to use trademarks. The Washington Redskins, who have indicated that it will appeal the decision, will retain its federal trademark rights pending appeal. Yet, even if they lose on appeal, they can continue to use the “WASHINGTON REDSKINS” marks and logos and will retain “common law” rights to the marks based on its 80 plus years of use of the marks. The Washington Redskins will still be able to enforce its “common law” rights against unauthorized users of the marks in both federal and state lawsuits for trademark infringement and unfair competition. Yet, it remains to be seen the effect that a defense of “disparagement” will have in a lawsuit.
Additionally, the various WASHINGTON REDSKINS logos possess the requisite level of originality to warrant copyright protection, which will provide the team another basis to go after unauthorized users of the logos.