Trademark Trial and Appeal Board Cancels Six Trademark Registrations Owned by the Washington Redskins*

On June 18, 2014, the United States Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB”) issued a blockbuster 2 to 1 decision cancelling six federal trademark registrations owned by the Washington Redskins.  All six registrations feature some variation of the term “REDSKINS” used in connection with professional football services. 

The decision was issued in response to a cancellation proceeding filed by a group of Native Americans claiming that the “REDSKINS” trademark registrations were obtained in violation of 15 U.S.C. § 1052(a) which prohibits the registration of trademarks that may disparage persons, or bring such persons into contempt or disrepute.  In analyzing whether the trademark registrations should be cancelled, the TTAB conducted a two-step inquiry as follows:

1. 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?
2. Is the meaning of the marks one that may disparage Native Americans?

Importantly, the above inquiry must be analyzed as of the date(s) that the trademarks were registered, here, between 1967 and 1990.  With respect to the first prong, the TTAB concluded that “[t]he term REDSKINS in the registered marks when used in connection with professional football retains the meaning Native Americans. Thus, the first prong of the test, ‘what is the meaning of the matter’ is established.”  And with respect to the second prong, after analyzing a substantial amount of evidence, the TTAB concluded 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.

As a result of this analysis, the TTAB cancelled the six “REDSKINS” trademark registrations at issue. 

Notably, this is not the first time that the TTAB reached this conclusion.  In response to a similar cancellation proceeding previously filed by Native Americans, the TTAB issued a decision in 1999 cancelling the same six trademark registrations.  In the 1999 decision, the TTAB also found that the “REDSKINS” trademarks were disparaging to Native Americans and, as a result, ordered cancellation of the registrations.  However, the TTAB’s 1999 decision was appealed, and ultimately overturned by the U.S. District Court for the District of Columbia which held that the Native Americans’ claims were not supported by substantial evidence, and were otherwise barred by the doctrine of “laches.” 

As recently articulated by one court: 

[i]n a legal context, laches may be defined as the neglect or delay in bringing suit to remedy an alleged wrong, which taken together with lapse of time and other circumstances, causes prejudice to the adverse party and operates as an equitable bar.

Medinol Ltd. v. Cordis Corp., 2014 U.S. Dist. LEXIS 33710 at *24 (S.D.N.Y. Mar. 14, 2014).

The District Court’s decision that laches barred the claim of the Native Americans was ultimately upheld on appeal by the U.S. Court of Appeals for the District of Columbia Circuit.  However, the appellate court did not adjudicate the issue of whether the Native Americans’ claims were properly supported by substantial evidence.

The laches argument was again raised, but this time rejected, the TTAB concluding that with the passage of the America Invents Act “…laches does not apply to a disparagement claim where the disparagement pertains to a group of which the individual plaintiff or plaintiffs simply comprise one or more members.”  And the TTAB observed: “it is difficult to justify a balancing of equities where a registrant’s financial interest is weighed against human dignity.”

What are the consequences of the TTAB’s decision?  Like the TTAB’s 1999 decision, the cancellation will undoubtedly become the centerpiece of complex appellate practice.  Under 37 C.F.R. § 2.145, the Washington Redskins have two months from the date of the TTAB’s decision to seek judicial review, either by the United States District Court for the Eastern District of Virginia or the United States Court of Appeals for the Federal Circuit.

In the interim, the actual cancellation of the “REDSKINS” trademark registrations will be stayed pending the exhaustion of any appeals.  The resolution of appellate proceedings will likely take years.  Thus, any person or entity desiring to use any of the “REDSKINS” trademark registrations in commerce without appropriate agreements with the Washington Redskins will do so at their own peril.  In addition, even if the Washington Redskins are not successful in the appellate arena and the “REDSKINS” registrations are cancelled, there is no requirement that the Washington Redskins must cease use of the “REDSKINS” marks.  It simply means that the Washington Redskins would not enjoy the benefits and protections of federal trademark registrations.  Indeed, the Washington Redskins may consider looking to the common law or other statutory law to enforce their intellectual property rights. 

The resolution by the federal courts of the cancellation of registrations will have broader implications, especially, if the decision is affirmed on the merits.  There are other professional sports franchises which employ names or logos that, like the Washington Redskins, may be subject to similar challenge.  For example, both the Atlanta Braves and Cleveland Indians own certain federal trademark registrations relating to their team names and logos dating back to 1967 and 1976 respectively.  It is conceivable that Native American groups, armed with favorable precedent from a federal court, could also seek cancellation of the various trademark registrations owned by these sport franchises as well.  But whether these registrations were disparaging at the time they issued is highly debatable.  Of course, any such challenges will likely be a fact-specific inquiry requiring the careful balancing by both courts, and litigants, of business, legal, and cultural considerations.

The TTAB’s comments about the difficulty in justifying a balancing of equities between financial considerations and human dignity may have come at the opening moments of the first quarter of the contest between the Washington Redskins and the Native Americans.  But those comments may provide a glimpse into the key questions that will be addressed by courts and future TTAB proceedings: under the social environment at the time of registration, was human dignity offended by the registered trademark; and when, if at all, will financial considerations outweigh the offensive nature of such mark?     

*Published in the October 2014 issue of Intellectual Property & Technology Law Journal.