2nd Down: Washington Redskins Franchise Loses Trademark Territory
State Bar Certified Specialist, Franchise & Distribution Law
by Tal Grinblat
818.907.3284
Yesterday’s U.S. Trademark Office’s ruling that six of the Washington Redskins’ trademark registrations – some owned since 1967 – are disparaging and should be cancelled, have some wondering whether any trademark is safe.
What’s to prevent a group of people in the future coming together and claiming that the Minnesota Vikings or New York Yankees registrations are disparaging to people of Scandinavian descent, or to those who reside in the North Eastern United States? Should they be cancelled as well?
With the promised appeal of this decision, it is clear the Redskins franchise won’t have to change their name anytime soon. But the question persists: can marks be deemed disparaging over time, and then be subject to attack?
In its ruling, the USPTO’s Trademark Trial and Appeal Board, found the following:
- The word REDSKIN on its face is and always has been a racial designation.
- The word REDSKINS is a plural of the word REDSKIN.
- The word REDSKIN on its face refers to the real or imagined skin color of Native Americans.
- Racial slurs often refer to real or imagined physical differences.
- Before 1966 no dictionary in the record included a usage label for the term REDSKIN.
- Beginning in 1966 and continuing to 1990, usage labels in dictionaries indicating the term REDSKIN to be offensive, disparaging, contemptuous or not preferred, first appear and then grow in number.
- From the mid-1960’s to 1996, the word ‘redskin(s)’ has dropped out of written and most spoken language as a reference to Native Americans.
- From at least the mid-1960’s to 1996, the words ‘Native American,’ ‘Indian,’ and ‘American Indian’ are used in spoken and written language to refer to Native Americans.
- The usage labels appear and the use of the word redskin(s) disappears because it is increasingly recognized that the term is offensive and disparaging during the relevant time period as Native Americans raise awareness about the offensive nature of the term redskin(s).
The Board 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.” Accordingly, the Board held the six registrations must be cancelled as required under Sections 2(a) and 14(3) of the Trademark Act.
USPTO: Second Down and Years to Go
So what is the import of the Board’s decision?
First, much will depend on the appeal and whether the Redskins franchise is able to persuade the Federal Circuit that the Board was wrong again (this is the second time the Board held the marks disparaging, the first decision was later overturned by the courts due to the equitable defense of laches). The Redskin registrations will remain effective while the case is on appeal.
Second, even if the Board’s ruling is upheld, the Board’s power is limited to cancelling the registrations. The team will continue to own and be able to protect its marks without the registrations based on common law rights. So while the team will lose some presumptions and statutory benefits of owning their registrations – even without the registrations – the team can still monitor, police and pursue infringers.
The Red Zone: Political Correction, Tradition, and Federal Law
But there are other factors at work as well.
Growing pressure from notable politicians – including 50 senators asking the NFL to initiate name change efforts – civil rights groups like the NAACP, and coalitions representing Native Americans, is on the rise. Proponents for the change say the league should be more politically correct overall, since the NFL is the recipient of federal tax breaks.
The 50 senators who signed the letter to NFL commissioner Roger Goodell cite several laws protecting Native American Culture, including the American Indian Religious Freedom Act, the Native American Languages Act, the Indian Arts and Crafts Act, and the Native American Graves Protection and Repatriation Act. They also cited the Donald Sterling/Clippers controversy as reason to get professional sports leagues to clean up their branding.
So in the end, even if the Redskins can legally continue to use their name (with or without a registration), the ultimate question will be whether the political pressure will be too overwhelming and change becomes inevitable.
Tal Grinblat is a Trademark Attorney and Shareholder at our firm. Contact him via email: tgrinblat@lewitthackman.com, or 818.907.3284.