USPTO Cancels "Redskins" Trademark Registration: What Does It Mean?
The United States Patent and Trademark Office, by a 2-1 decision, cancelled six trademark registrations for the use of the term "REDSKINS" by the Washington Professional Football team. The cancelled registrations were issued between 1967 and 1990. The PTO majority held that "these registrations must be cancelled because they were disparaging to Native Americans at the respective times they were registered, in violation of Section 2(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a)."
This ruling will not require Washington to cease using the name "Redskins". The PTO does not have the power to enjoin the use of a trademark, only the power to cancel the federal registration of that trademark. Cancellation of the trademark, however, has several important legal consequences on the ability of the team to prevent others from using the name. For example, if the PTO's ruling is confirmed on appeal, the team will no longer have automatic jurisdiction to bring a suit for trademark infringement in federal court. The team also no longer will be able to enlist the assistance of the United States Customs and Border Protection to stop unlicensed Washington Redskins gear from being imported.
Follow below the fold for an analysis of what happened and what is likely to happen next.
Today's Ruling Is Part Of A Twenty-Two Year See-Saw Legal Battle
In 1992, a group of Native Americans (led by Suzan Harjo) filed a petition to cancel the Washington Redskins trademark registrations on the grounds that the term "Redskins" disparaged Native Americans. Under Section 2(a) of the Trademark Act, a trademark cannot be registered if it "consists of . . . matter which may disparage . . . persons." Under PTO precedent, the determination of whether a term disparages a group is not based upon the understanding of the referenced group (i.e. Native Americans), not the general public. Disparagement will be found if a "substantial composite" of the referenced group found the term offensive at the time of registration, even if that view was not held by a majority of the group.
In 1999, following seven years of proceedings, the PTO issued a final ruling canceling the Redskins' trademarks as disparaging. The PTO denied the Redskins' claim that the petition was barred under the doctrine of laches - meaning the petitioners waited too long after the PTO registered their trademarks to bring their cancellation petition. The PTO held that the laches defense simply was not available to a claim that a trademark registration was disparaging to a group.
The cancellation was immediately appealed to the United States District Court for the District of Columbia, which reversed the cancellation in 2003 on two grounds: (1) the record did not provide the PTO with "substantial evidence" that the term "Redskins" was considered disparaging as of the time of the registrations and (2) the petition should have been dismissed under the doctrine of "laches". The District Court decision, in turn, was appealed to the United States Court of Appeals for the District of Columbia.
In 2005, the Court of Appeals weighed in. It affirmed the District Court's ruling that the "laches" defense was available, but held that the District Court misapplied it. The Court of Appeals held that the period for measuring unreasonable delay under the laches defense started from the time a petitioner turned 18 years old, not from the time the trademark was registered, and ordered the District Court to reconsider its decision under that standard.
In 2008, the District Court held that laches barred the cancellation petition. That decision was again appealed to the Court of Appeals. In 2009, the Court of Appeals upheld the District Court's ruling that laches barred the cancellation petition. The Court of Appeals never addressed the District Court's alternative ruling that the record did not provide "substantial evidence" of disparagement.
While the Harjo case was bouncing back and forth in the courts, six new individual petitioners filed to cancel the Redskins' registrations. Each of these petitioners turned 18 between 2000 and 2005, while Harjo litigation was pending. Their petitions were stayed pending resolution of the Harjo case, and re-animated in 2011.
The PTO Found That The Term "Redskins" Was Disparaging To Native Americans From 1967 - 1990
The PTO held that the term Redskins was considered disparaging by a substantial number of Native Americans from 1967 through 1990:
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. Section 2(a) prohibits 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.
The PTO based its ruling on contemporaneous dictionary definitions, contemporaneous complaints by individual Native Americans and a 1993 resolution of the National Council of American Indians seeking the cancellation of the Redskins' trademark registrations as disparaging. In particular, the PTO held that the NCAI resolution should be taken as representing the views of the 30% of Native Americans whose tribes were members.
The PTO Held That Laches Did Not Apply
The PTO held that the prior ruling that the defense of laches barred the Harjo petition did not apply to the current petition. The PTO held that it was free to reconsider the DC Court of Appeals ruling on laches, because of a change in procedural law in September 2011 that provide the DC Court of Appeals does not have jurisdiction over any appeal in this case. The PTO reverted to its original holding that laches was not available as a defense against a petition to cancel the registration of a disparaging trademark, using the most inflammatory example:
"It is difficult to justify a balancing of equities where a registrant’s financial interest is weighed against human dignity. To apply laches to this type of claim contemplates the retention on the register of a mark determined by the Board to be a racial slur, in blatant violation of the Trademark Act’s prohibition against registration of such matter, merely because an individual plaintiff “unreasonably delayed” in filing a petition to cancel. For example, if Reg. No. 217,067, renewed in 1946 for twenty years, i.e., until 1966, for the mark NIGGER BABY BRAND for oranges and grapefruit were still active, individual members of the group referenced by such matter would be barred from seeking cancellation if they “unreasonably delayed” in seeking such relief."
The PTO further held that even if the laches defense was available, it would not apply against these petitioners because they did not unreasonably delay in bringing their cancellation petitions, when measured from the time each turned 18 years old.
The Washington Football Team Keeps Its Federal Trademark Rights During An Appeal
The Washington Football Team has two avenues that it can pursue to appeal the PTO's ruling. It can bring an action in the United States District Court for the Eastern District of Virginia. Alternatively, it can skip the District Court and appeal directly to the United States Court of Appeals for the Federal Circuit. In either scenario, the appeal must be filed within two months of the PTO's final action.
The team has already announced that it will appeal, and that it expects that this PTO order will be overturned just like the 2003 cancellation order:
"We are confident we will prevail once again, and that the Trademark Trial and Appeal Board's divided ruling will be overturned on appeal," said team attorney Robert Raskopf in a statement. "This case is no different than an earlier case, where the Board cancelled the Redskins' trademark registrations, and where a federal district court disagreed and reversed the Board."
Going Forward, The Redskins Can Still Use The Name
Federal trademark registration does not create trademark rights, it merely makes those rights easier to enforce. The team certainly can elect to continue to use the Redskins name during the pendency of its appeal, just as it used the Redskins name between 1999 (when the PTO ordered the cancellation of the Redskins' registrations in the Harjo case) and 2003 (when the District Court first overturned that ruling). The difficult decision for owner Daniel Snyder will come if his appeal is denied.
I expect that the PTO will be reversed on appeal. The record in this case is almost identical to the record in the Harjo case, which the District Court held in 2005 was insufficient to provide a "substantial basis" to demonstrate that "substantial composite" of Native Americans considered the term Redskins to be disparaging in connection when used from 1967 - 1990 in connection with the football team.
If the cancellation of the registrations for the "Redskins" trademarks are affirmed, the team will lose important procedural rights. It will lose the right to automatically have jurisdiction in federal court for lawsuits against trademark infringers, although it could pursue suits under common law in state court or federal court (under particular circumstances). It will also lose the right to request the assistance of the Customs Service to prevent unauthorized Redskins goods from entering the United States.