Trademark Board calls “foul” on Redskins

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The Washington Redskins are an American football team with a history dating back to 1932 when the organization was formed in Boston.  The team was originally designated the Boston Braves, but after one year the name was changed to the Boston Redskins.  In 1937, the National Football League approved the Boston Redskins’ move to Washington, D.C., and the team as it is known today was born.

The Redskins’ name has been under attack, primarily by Native American groups, for more than twenty-five years.  In 1988, after the team won its second championship, the name faced its first serious attack.  This attack gained momentum when Suzan Harjo and six other Native Americans filed the first petition to cancel the Redskins’ trademark in 1992.  The group brought this petition under Section 2(a) of the Trademark Act, stating that the Redskin trademarks disparage Native Americans, bring Native Americans into contempt, ridicule, and disrepute, and consist of scandalous matter.

The Trademark Trial and Appeal Board sided with the Petitioners and held the Redskins’ trademarks to be disparaging to Native Americans when registered and ordered the registrations canceled.  The U.S. District Court for the District of Columbia reversed on appeal, ruling that the finding of disparagement was not supported by substantial evidence and that the doctrine of laches precluded consideration of the case.  There had been very little litigation since the resolution of the Harjo case until recently when a group of five Native Americans brought cancellation proceedings under Section 14 of the Trademark Act of 1946, 15 U.S.C. § 1064.

The petitioners “seek to cancel respondent’s registrations issued between 1967 and 1990 for trademarks consisting in whole or in part of the term REDSKINS…”

There are several methods for seeking a cancellation of a trademark under 15 U.S.C. 1064.  The Petitioners have filed under Subsection (c), which states that “a petition to cancel a registration mark . . . may . . . be filed as follows by any person who believes that he is or will be damaged . . . by the registration of a mark . . . at any time if the registered [mark’s] registration was obtained contrary to the provisions of subsection (a), (b), or (c) of section 1052 of this title . . .”  Specifically, the petitioners “seek to cancel respondent’s registrations issued between 1967 and 1990 for trademarks consisting in whole or in part of the term REDSKINS . . . on the ground that the registrations were obtained contrary to Section 2(a), 15 U.S.C. § 1052(a).”

There are six trademarks at issue in this case.  Each trademark incorporates the Redskins name, two include Native American imagery, and the last trademark is for the “Redskinettes,” the team’s cheerleaders.  The first trademark was registered in 1967, three more were registered in 1974, and the final two were registered after 1978.

The Board looked to determine whether the meaning of the marks was disparaging to Native Americans.

The Trademark Board applied a two-part test to determine whether the Redskins’ trademarks were disparaging.  First the Board asked, “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?”  Second, “is the meaning of the marks one that may disparage Native Americans?”  These questions are answered as of the dates of the registration of the trademarks.  For example, the first trademark was registered in 1967, so the first question must determine the meaning of the trademark as of 1967.  The second question must be answered by determining the views of the Native American people and not the American public as a whole.

To establish the first prong of the disparagement test the Board looked to how the Redskins organization represented itself.  The Board referenced the logo on the players’ helmets, the fans’ and cheerleaders’ use of Native American headdresses, and the team’s “continuous efforts to associate its football services with Native American imagery.”  Thus, the Board determined the term Redskins as used in the registered trademarks as meaning “Native Americans.”

After establishing the first prong, the Board looked to determine whether the meaning of the marks was disparaging to Native Americans.  The Board looked to the context of the goods and services using the marks in making this determination.  According to past precedent, context can accomplish one of three things.  First, it can “turn an innocuous term into a disparaging one.”  For example, labeling a bottle of wine “Khoran” disparages the beliefs of Muslim Americans.  Second, context can strip the disparaging meaning of an otherwise disparaging term.  Third, context has no impact on the disparaging meaning.

In this case, the petitioners alleged that “Redskins” is a racial slur and falls into the first context-influenced category because it is not a disparaging term.  Additionally the Board found that context did not strip the term of its disparaging meaning because it had already established that the trademark preserved the meaning “Native Americans.”

This left the Board with a singular determination, “whether a substantial composite of the referenced group found Redskins to be a disparaging term in the context of respondent’s services during the time period 1967-1990.”  If the Board finds the term to be disparaging, then both prongs of the disparagement test are met and the Trademark Act requires the trademarks’ removal.

The petitioner’s arguments created two groups of evidence.  First was a general analysis of the word Redskins and second was the views of the Native American people with regards to the word Redskins.  Respondent’s expert report confirmed what everyone already knew—the term “Redskins” refers to skin color.  To further the point, the record included a number of dictionary definitions for the term “Redskin.”  In order to accurately reflect the perception at the time of recording the dictionaries were from the late 1960’s and 70’s.  A little over half of the dictionaries that were cited included phrases such as “often offensive,” “often disparaging and offensive,” “contemptuous,” or “not the preferred term” when defining the term at issue.

After listening to linguistic experts and lexicography experts, the Board heard evidence from leaders of different Native American tribes, letters of Native American people, and the National Congress of American Indians (NCAI).  Although the evidence gathered from the Native American community was conflicting, it became clear that the Native American people did not support the Redskin trademark.

 However, the Trademark Board can only cancel the registration; it can not enjoin the organization from using the word “Redskin.”

Ultimately, the Board sided with petitioners, finding the word “Redskin” to be a racial designation that refers to the real or imagined skin color of Native Americans, and “the term Redskins to be disparaging in connection with respondent’s services during the relevant time frame of 1967-1990.”  As a result, the Board cancelled all six Redskins registrations.  However, the Trademark Board can only cancel the registration; it can not enjoin the organization from using the word “Redskin.”

Although the organization will not be enjoined from using the word “Redskins,” this decision is a huge step in the right direction for the Native American people.  As expected, the Redskins organization plans on appealing the cancellation order and will most likely argue the equitable defense of laches during its appeal.  Recognizing the path that this lawsuit would take, the Trademark Board decided it was appropriate to provide its opinion on the matter, holding that the doctrine of laches does not apply to a disparagement claim.  The Board states that laches is an equitable defense, and as such, “it is difficult to justify a balancing of equities where a registrant’s financial interest is weighed against human dignity.”