In a 2-1 decision, the U.S. Patent and Trademark Office has cancelled five trademark registrations containing the term REDSKINS for use in connection with football "exhibitions" and contests" and one registration for the mark REDSKINETTES for use in connection with cheerleaders who perform dance routines at professional football games.
Notably, the Trademark Office's decision concerns only the statutory right to registration, as the Trademark Office lacks the statutory authority to issue rulings concerning the right to use trademarks.
This decision as it stands today only affects the benefits that derive from the registrations, such as the ability to use the ® symbol, and the presumption of ownership and validity. However, it does not affect the team's ability to use the name, nor does it affect the team's long-standing "common law" rights to be able to stop others from using the trademarks. So despite what you might be hearing in the news, be careful of those suggesting "money-making" ideas of creating and selling Washington Redskins paraphernalia. However, the current Board decision, absent a reversal by the courts, does set up an interesting dilemma as to whether any court will enforce the rights of a trademark owner whose trademark has been found to be disparaging.
The cancellation proceeding was brought by five Native Americans, who sought to cancel trademark registrations issued between 1967 and 1990 for trademarks "consisting in whole or in part of the term REDSKINS for professional football-related services" on the grounds that the law prohibits registration of marks that may "disparage persons or bring them into contempt or disrepute."
To cancel based on disparagement, the Patent and Trademark Office had to find that the trademarks were disparaging to Native Americans at the time of registration, which spanned the period of 1967-1990.
This is the second time the Patent and Trademark Office has faced a petition to cancel these registrations. In 1992, a group of Native Americans filed a petition to cancel the same registrations on the ground the marks "consist of or comprise matter which disparages Native American persons, brings them into contempt, ridicule, and disrepute; and the marks consist of or comprise scandalous matter..." After years of litigation, the Trademark Office found the REDSKINS marks were disparaging to Native Americans when registered and ordered the registrations canceled. However, after a reversal in the courts, ongoing appeals and other procedural matters, the action remained pending.
While the first action was still pending, the present action was filed seeking to cancel the same registrations for the REDSKINS marks, in which the parties stipulated, with certain exceptions, that the entire first action would be submitted into evidence in this second action.
In this second action, the Trademark Board again had to determine the answer to two questions relating to the issue of disparagement:
Importantly, both questions were to be answered as of the various dates of registration of the involved marks.
In deciding the second question, whether the term "redskins" may disparage Native Americans, the Board looked not to the American public as a whole, but to the views of the referenced group (i.e., Native Americans), and stated that the views of the referenced group are "reasonably determined by the views of a substantial composite thereof."
After citing numerous examples in the record, the Board found the term REDSKINS in the registered marks, when used in connection with professional football, retains the meaning Native Americans, thus establishing the first prong of the test. Thus, all that was left for the Board was to decide whether the meaning of the marks, at the times of their respective registrations, was one that may have disparaged Native Americans.
As to the second prong, the Board found that "at a minimum, approximately thirty percent of Native Americans found the term REDSKINS used in connection with the football related services to be disparaging at all times including [the years that] corresponded to the dates of the registrations. The Board noted the Trademark Laws
prohibit registration of matter that disparages a substantial composite, which need not be a majority, of the referenced group. Thirty percent is without doubt a substantial composite. To determine otherwise means it is acceptable to subject to disparagement 1 out of every 3 individuals, or as in this case approximately 626,095 out of 1,878,285 in 1990." There is nothing in the Trademark Act, which expressly prohibits registration of disparaging terms, or in its legislative history, to permit that level of disparagement of a group and, therefore, we find this showing of thirty percent to be more than substantial.
To be sure however, this matter is far from over. For one, the dissenting Board member noted that most of the evidence submitted in the present proceeding was the same evidence that a district court had previously ruled was insufficient to support the original cancellations. In addition, the dissenting judge noted that
"it [was] astounding that the petitioners did not submit any evidence regarding the Native American population during the relevant time frame, nor did they introduce any evidence or argument as to what comprises a substantial composite of that population thereby leaving it to the majority to make petitioners' case have some semblance of meaning."
Surely we are only at the end of the first half of this contest. But stay tuned, the second half will certainly be interesting.
For more information about this or other Intellectual Property related topics, contact Arthur Schaier at 203-575-2629 or any of our IP attorneys.