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Legally Suspect TTAB Decision Cancels Redskins Trademark


Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course
Posted: June 19, 2014 @ 6:00 am

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Yesterday the Trademark Trial and Appeal Board (TTAB) issued a decision in Blackhorse v. Pro Football, Inc., which canceled a variety of U.S. federal trademarks that were issued to the Washington Redskins football team between 1967 and 1990. The trademarks in question consisted in whole or in part of the term REDSKINS for professional football-related services. The TTAB ruled that these trademarks were inappropriately granted on the ground that the registrations were obtained contrary to Section 2(a), 15 U.S.C. § 1052(a), which prohibits registration of marks that may disparage persons or bring them into contempt or disrepute.

While this decision will be widely cheered by those who proclaim the virtues of political correctness, there is absolutely no doubt in my mind that from a legal standpoint this decision is clearly wrong.

From a purely legal standpoint there is absolutely no valid reason to have canceled the trademarks in question, but this is the second time the TTAB has canceled these same trademarks. Ultimately, the previous challenge was reversed as the result of laches because the challengers waited too long to bring the challenge. Laches was not an issue in this case, but previously federal courts also question the evidence, or lack thereof, relied upon the challenge the trademarks. See Redskins Can Keep Trademark.

If the law matters this decision will be overruled on appeal. This is not to say that the trademarks in question are not hurtful to some, but the law simply requires direct evidence that the relevant audience, in this case Native Americans, found the term disparaging when the trademarks were actually registered. On this critical question there was simply not competent legal evidence, which is not to say that the term in and of itself isn’t offensive or it hasn’t been used as a racial slur. Based on the appropriate legal standard those things simply are not relevant.

One must question, however, whether the law will matter and whether the Redskins are just on the wrong side of history. Some leaders, including President Barack Obama and Senate Majority Leader Harry Reid have proclaimed the trademark must go, inserting themselves into this legal contest as if there aren’t more pressing issues facing America.

The main problem with the TTAB ruling is that there is no evidence to support the decision. The relevant legal question is not whether a trademark is politically incorrect, or whether a trademark becomes disparaging. Rather, the question is whether at the time the trademark was registered whether it was disparaging. That means that the challengers to the trademark must submit evidence that the trademark would be considered disparaging as they were registered. But finding evidence today of what the public would have perceived back in 1967, for example, is not easy.

Whether the mark is politically incorrect or disparaging today is completely irrelevant from a legal standpoint. Still, over 80% of Americans do not find the name disparaging, while a 2004 poll of Native Americans found that 90% didn’t believe the name was problematic. Thus, there was not only a lack of evidence, but there is a disconnect between what the TTAB found and the perceptions of the public. This seems particularly problematic.

So what evidence did the TTAB purport to rely on? By their own admission the TTAB relied upon a National Congress of American Indians’ (“NCAI”) 1993 Resolution 93- 11, among other contemporaneous evidence. Under the appropriate legal standard what someone said or thought in 1993 is wholly irrelevant to the question of whether in 1967 a trademark was disparaging. This and other contemporaneous testimony is simply not legally probative on the critical question. If the district court and appellate courts follow the law this decision will be set aside.

About the only contemporaneous evidence submitted was that certain dictionaries defined the term “redskin” as often being offensive. But even that does not provide the support  you might otherwise think it would when you probe the central question at issue. The question is not whether the term “redskin” is offensive, or even whether the term “redskin” is disparaging. The question is whether the term as used as a trademark in the given context is disparaging. Simply stated, there was no evidence on the question of whether the relevant community (i.e., Native Americans) found the trademark REDSKIN as associated with professional football related offerings disparaging dating all the way back to 1967.

What many accounts of this ruling will likely omit is the fact that the TTAB decision was not unanimous. There was a dissent filed by Administrative Trademark Judge Marc Bergsman. He explained:

To be clear, this case is not about the controversy, currently playing out in the media, over whether the term “redskins,” as the name of Washington’s professional football team, is disparaging to Native Americans today. The provisions of the statute under which the Board must decide this case – §§ 2(a) and 14(3) of the Trademark Act, 15 U.S.C. §§ 1052(a) and 1064(3) – require us to answer a much narrower, legal question: whether the evidence made of record in this case establishes that the term “redskins” was disparaging to a substantial composite of Native Americans at the time each of the challenged registrations issued.

Bergsman also pointed out that, contrary to the claims of the majority, a federal court did previously find the evidence relied upon by the TTAB in Harjo was insufficient to support a finding that the trademarks are disparaging. He explained:

The D.C. Circuit Court of Appeals did not overturn the district court’s ruling in Harjo II that the evidence introduced at the Board in the Harjo cancellation proceeding was insufficient to support the Board’s decision in that case. Nor has the passage of time aided what could be described as a stale record. The consequence of petitioners’ decision to rely on the same evidence previously found insufficient to support cancellation without substantial augmentation is that the evidence before the Board in this case remains insufficient as well.

Indeed, the evidence relied upon by the TTAB in this case was essentially unchanged. Thus, if the district court ruling is consistent that should mandate a finding that the evidence in this case is legally insufficient.

In short, there was no evidence to support the challenge and the TTAB should never have ruled as they did. While we can discuss whether the term “Redskin” is disparaging, offensive or politically incorrect, in order for the challenge to succeed the law would have had to be ignored, and evidence from years after the fact would need to be relied upon in exchange for evidence in existence at the relevant time, namely the time of registration. Altering the law and in particular rules of evidence to come to a politically correct decision is not appropriate on any level.

Time will tell whether this decision stands. If the law is actually applied properly this decision of the TTAB will be overruled. But it is possible that the law will not matter. It is entirely possible that political correctness will lead to classic misinterpretations of the law in order to achieve the predetermined, desired result.

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Posted in: Gene Quinn, Government, IP News, IPWatchdog.com Articles, Trademark, Trademark Trial and Appeal Board, USPTO

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

25 comments
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  1. Gene,

    As a “diehard” Redskins fan of over 55 years (and 1/32 Cherokee to boot), this TTAB decision will not stand. Nothing but unsupported “political correctness” in its worst form. As you note, we’ve been over this ground before in Harjo which ruled this mark was not disparaging because there was no evidence to support it. What has changed since Harjo other than the political climate?

  2. You say “no evidence”:

    The main problem with the TTAB ruling is that there is no evidence to support the decision. The relevant legal question is not whether a trademark is politically incorrect, or whether a trademark becomes disparaging. Rather, the question is whether at the time the trademark was registered whether it was disparaging.

    The article by Jesse Witten in the Washington Lawyer says “evidence”:

    Evidence introduced by the Blackhorse petitioners proving disparagement includes:
    •Dictionaries, reference works, and other written sources that state that “redskin” is disparaging;
    •Evidence regarding the 1972 meeting between the president of NCAI and other Native American leaders and the president of PFI at which the Native American delegation objected vigorously to the team name and demanded a change;
    •Resolutions and other actions of the NCAI opposing the team name;
    •Opposition of other Native American groups and individuals to the team name;
    •Expert testimony that “redskin” was not a term used in late 20th-century newspapers to refer to Native Americans, while “Indian,” “American Indian,” and “Native American” were widely used;
    •Examples of “redskin” used in written sources in a derogatory manner;
    •Examples of “redskin” used in movies in a derogatory manner;
    •Various admissions by PFI and the NFL that “redskin” is a disparaging term; and
    •Examples of PFI’s use of the team name and marks in ways that mock Native Americans and their culture.

    Perhaps you can distinguish some on the list based on “at the time of registration,” but I’m curious how you ignore all of the evidence.

  3. What I think about the use of this word for this product is irrelevant to the issue at hand, as Gene pointed out so well. I have a real problem with the decision as judges are not supposed to be bending to popular social mores of the time. They are supposed to be guardians of the laws in place. If the laws are incorrect, then state that incorrectness, invalidate the laws, and let the democratic process move forward to fix things. Political correctness can certainly play out in the creation of new laws or changes to the current laws, but as a judge, you cannot simply chose to ignore precedent, stare decisis, and the actual language of the laws as written.

    For a judge, knowing that this decision will be appealed by whichever side loses in this venue, why not draft the most sound legal decision that you can and add your commentary as to the rightness or wrongness of the state of the law that led to this decision. Then, when the appellate tribunal reviews the decision, they can praise your work and your insight, while not having to slap you down as a fool for inserting your own opinions into an incorrect legal statement. And your condemnation of the incorrect law can become part of the record in a positive way that may be cited in changing the law.

    I am sorry for the harshness of the statement, but the majority come off looking like activist fools with this decision.

    ars

  4. Washington Native Americans?

  5. Oklahoma was known alternatively as the “Oklahoma Territory” and the “Indian Territory,” home to Choctaw and Cherokee, before statehood came in 1907. “Oklahoma” derives from the Choctaw “Okla Humma,” meaning “Red People,” i.e., “Redskin.” Hence, the idea that “Redskin” is a derogatory term invented by whites is just a load of politically correct crap. Can’t wait to see this one overturned.

  6. Igloo-

    There is no competent evidence from a legal standpoint. You seem to think the requirement that the evidence be from the time of registration is meaningless. The key here is that in order for the trademarks to be canceled as disparaging there needs to be evidence that the mark was considered disparaging in context of use by the relevant audience at the time of registration. There is simply no evidence that satisfies the legal standard.

    Evidence from 1972 is irrelevant for a trademark filed in 1967. Further, there was no evidence to establish the membership of the NCAI. They self report having 300,000 members, but there was nothing independent to corroborate that. That is why proper professional surveys done in an accepted scientific matter are required as evidence in trademark cases.

    As far as the dictionary definitions go, as I explained in the article, the fact that the term is disparaging isn’t enough legally. The term has to be disparaging in the context of use. So defining the term “redskin” as disparaging is irrelevant legally. The question is whether it would be deemed disparaging at the time of registration by the relevant audience (i.e., Native Americans) in the context of use to represent a football team. On that question, which is the only essential legal question, there was no relevant, competent evidence.

    The other reality is that survey after survey shows that overwhelmingly Americans do not find the term disparaging. The percentage of Native Americans that are not offended is even higher than the population as a whole.

    If the law matters this decision will be overruled again. We can discuss whether that should be the law, but from a legal standpoint this is an easy case with but a single proper answer. The dissent is correct, the majority is mistaken, the case will be overruled.

    -Gene

  7. Gene,

    One word in your reply to Igloo at 6 caught my eye:

    again.

  8. Anon @7-

    Yes, again. Despite what the majority said to the contrary, there was a finding in the federal courts that the evidence was insufficient. The court of appeals decision relied on laches, but didn’t overrule the district court determination that the evidence the TTAB relied upon was insufficient from a legal standpoint.

    If the law is followed and political correctness doesn’t factor into the equation, the Redskins will ultimately prevail.

    -Gene

  9. Gene — this survey says your data is wrong, that 67% of American Indians think Snyder’s work is racist —

    http://cips.csusb.edu/docs/PressRelease.pdf

    Just wait until Snyder’s sponsors start getting heat. It won’t be pretty.

  10. using all of the logic offered here in the article, and in the comments, you can just as easily support SCOTUS’s decision in Plessy. separating morality from the law, with all your strict interpretations, is just hiding moral bankruptcy. “oh yes, while we can argue whether it is disparaging, the LAW allows inequality so let it be.”

    use of disparaging terms is ok because it wasn’t at one time in the past. that is just stupid. i suppose you’d be in favor of bringing back Sambo’s restaurants.

  11. Gene-

    Where is the proof that the use of “REDSKINS” is disparaging? That is what you are missing. You bring up Plessy for the purpose of diverting attention to he real issues and instead going for the emotional rather than logical solutions, but Plessy is wholly irrelevant.

    There was no evidence that the use of the trademark is disparaging. The fact that the dictionary says the term “redskin” is often offensive by necessary implication also means that it is sometimes not offensive. The right inquiry is whether the term is offensive in context of use as a trademark, and there is no evidence on that point.

    Incidentally, 90% of Native Americans have no issues with the team being named Redskins, and 80% of Americans in general have no problem with it. While contemporaneous surveys are also legally irrelevant, it is nonetheless extraordinarily telling. Overwhelmingly REDSKINS is not considered disparaging despite what you say to the contrary.

    -Gene

  12. As a sports fan, I am appalled at the naked attempts at coercive thought and speech control.

    In essence: “That word MUST be bad because I say it is bad, and you MUST be thinking the bad meaning because you see the word.

    What utter rubbish. Remove all of the political correctness grandstanding, look at the subject matter to which the mark pertains, and hear the word.

    I cannot believe any reasonable person would think disparagement is in action, that harm is either intended or delivered by the person using the word. Outside of 2012, it is the football team’s PLAY that is disparaging, not their name.

    What the politically correct fail to realize is that by attempting to hold on to the disparagement in the term (what may or may not have been there at the time of filing) they are actually using the term as a vehicle of disparagement instead of letting the meaning of the term evolve over time. There is a cementing in place the very thing normal people would want to see dissipate.

    Likewise with the Cleveland Indians Chief Wahoo. A demonstration on opening day depicted a confrontation between a sports fan and an ideologue. It was the ideologue that harbored the venom and animosity. It was the ideologue that was reverberating a disparagement that the other person never felt, never intended, and certainly never instigated. The sports fan was there to root ON his team – cheer ON his team – and engage in a good and enjoyable thing. Harm? The only harm brought to the situation was the harm brought by the “victim” himself. Those that have never been involved (participating or cheering) with sports wish to interject themselves into something that they just don’t have a clue about.

    I am an ardent supporter of anti-racism. This though is not that. Political correctness may have a few aims in common, but there is a very real difference.

  13. OLD DATA, DONE WRONG

    Ignoring groups like the United Church of Christ and using 20-year-old “studies” to claim no problems fly in the face of reality. WashPost today: FedEx, which sponsors the stadium, won’t use the R word.

    And “studies” claiming “tribes” don’t oppose Snyder? Gee — what is an “American Indian?” Like Eliza. Warren, who’s 1/132nd Cherokee — hey, good enough for Harvard Law?

    NYTimes notes similarity to USPTO rejecting trademark for “Heeb” magazine group. Gee — how’s Snyder on that case?

    Per Bob Dylan, times have changed. Snyder can either take the high road, or spend the next 25 years on this. Tribes are never giving up. That’s on him.

  14. It seems to me that a trademark is a property right once it is issued. Isn’t this a takings issue in that it was extinguished by an Article I court? Where is the due process?

    Judges in an Article I court are salaried employees with careers and a chain of command that ends in the political office of the president. In this case the political office has been screaming loudly that they don’t like the R-word (dare I say REDSKIN). Should property be granted and extinguished simply based on the political opinions of the administration?

  15. Paul,

    Your post shows a clear indication that First Amendment protections (as opposed to due process protections).

    Not too surprisingly (except maybe to Rho and other politically correct minded people), Rho’s post also favors First Amendment protection for the Redskins organization. It is exactly that type of “popularity” content specific prohibition aimed at silencing a party that the First Amendment is meant to protect. Note that this explicitly does not mean that the protests, or even Rho’s post here, should be eliminated, as that too is speech aimed to be protected. What often escapes the logic of the politically correct is that protection of speech and enablement of speech – even that which some may find offensive – is the goal, and curtailment of speech is NOT the goal.

    The tie-in between the specific right in question and the First Amendment is the viewpoint specific control intersecting with government action.

  16. Paul, why not you, Dan Snyder, and Gene try the scientific approach?

    Go to the Black Hills and start addressing the locals as “redskin” to their faces and see the reaction. Note: more life insurance would be a very good idea.

    Snyder’s tried it. Not very positive, obviously.

    http://www.usatoday.com/story/sports/nfl/redskins/2013/11/06/daniel-snyder-washington-indians-poarch-mascot/3459141/

    Y’all can try to have peace and be leaders. Or fight with those who will never, ever surrender .. who will fight you in court to their last breath.

    Your choice.

  17. Rho,

    You are fighting a fight in your own mind.

    Good luck with that.

  18. Rho, I think we are taking a scientific approach to a couple of specific IP law questions. One question that I am not considering is whether the word “redskin” is racist. We could have that discussion, but it is not an IP law question. I’ll reserve my comments to that question to Facebook.

    But just so you know, I lived on a reservation, owned land there and had a business. I am also part Indian.

  19. To those who formerly lived on tribal nation lands (f.k.a., “reservations”) —

    That was then. This is now. Living in the past rarely connects with today. Today, an Elizabeth Warren wanna-be applying to Harvard Law faculty as a “part Indian” (1/132nd?) would be laughed off campus. Recent rez resident? More like, never-ever.

    As to “takings” — there’s a golden rule. “S/he with the gold, rules.” USPTO and the courts frequently yank government licenses — Alice Corp., y’all?

    Snyder can put on a KKK outfit for all we care — see “The Onion” on that. He just doesn’t get a government monopoly. He doesn’t like it, he can sell the team and move into clubs with female nude dancing. Good profits there.

    Tribes will fight this, to the end of time. Any smart lawyer would be looking for an exit. Snyder, Mr. Telemarketing, isn’t as smart as he thinks, IMHO.

  20. These is the most doltish points. “As to “takings” — there’s a golden rule. “S/he with the gold, rules.” USPTO and the courts frequently yank government licenses — Alice Corp., y’all?”

    As for “S/he with the gold rules.” This particular issue was addressed by the Constitution and more particularly, the Bill of Rights. Those from third world countries may still believe this to be the case, however since the Enlightenment Period this injustice has been solved.

    As for the doltish statement of the “USPTO and the courts frequently yank government licenses”. Since you are addressing me, I assume you are addressing my earlier post. You seem to be missing the point completely. First it is not a license. It is a property right. Second, the USPTO is an Article I court. An Article I court cannot take property and still be within the 4th Amendment requirement of due process of law. Please comment on this issue if you would like to further our discussion. Otherwise, I’m with Anon and you are fighting in your own mind.

  21. Rho-

    Eventually the Washington Redskins will prevail again, like they did the last time.

    While you obviously find the name Redskins hurtful the overwhelming majority of Americans, including Native Americans, disagree.

    -Gene

  22. Gene, you do not appear to an American Indian/Alaskan Native. What is it, that you believe you speak for AI/ANs? How would you feel if AI/ANs tried to speak for Irish-Americans?

    If Snyder is ignorant enough to keep fighting in the courts, the tribes will fight him in the courts, and Snyder’s lawyers will eat at fine steakhouses. WashPost will have on his obit: “he was accused of racial insensitivity to his last day, which he denied.”

    And others will post “The Onion” about Snyder, and his children will again be mortified —

    http://www.theonion.com/articles/redskins-kike-owner-refuses-to-change-teams-offens,34292/

    See you in court, y’all.

  23. Rho-

    The fact that I am not an American Indian doesn’t mean I can’t have an opinion. Grow up!

    The Tribes can fight all they want. Fighting makes all the sense in the world. Waste their money fighting a battle they can’t hope to win, on an issue where overwhelmingly Americans agree with the NFL. It will make SO much more sense for Tribes to spend money paying lawyers to fight a losing battle than to invest in communities, infrastructure and people.

    You won’t be seeing me in court, but the lawyers you will pay will be greatly appreciative no doubt!

    -Gene

  24. Sadly, Rho epitomizes the mindset of not letting go of a hurt feeling. This is what Political Correctness feeds on and in a counter-intuitive manner, actually perpetuates as PC needs this negative energy to flourish. It is only by holding on – and fanning the flame of this hatred – can the beast that is Political Correctness grow in strength.

    This type of thinking perpetuates that which is wrong in the first place – under the guise of ‘justifiable vengeance,’ righteousness is perverted into a vehicle of prolonged hatred and venom. Refusing to understand the context of the use – and that NO disparagement is present in this particular use – only serves as a vehicle of the “victim” playing the “victim’s card” and justifying a vengeance against an imagined foe.

    Think the dream of Martin Luther King Jr: one day, if you try to hold onto your hurt, all will look at you and wonder what the He11 you are on about. One day, the term of Redskin will NOT mean anything remotely hurtful or disparaging. Using my example above, the incident between the ideologue and the Cleveland Indians fan, who then is perpetuating hate? Hint: it is not the fan celebrating in joy his team by embracing the chosen mascot and hoping (sometimes beyond hope) that the mascot’s GOOD qualities show up in the team’s players.

  25. Another indication of Political Correctness: “you are not one of us, you cannot understand, we cannot be wrong, we will not stop

    Don’t get me wrong, Rho, I truly believe that you have every right to talk and think how you want to talk and think. But please, do not be offended (or take it as disparagement) when I counter what you say with a little critical thinking, a little thoughtful reflection, and a little common sense.