In a precedential decision, a divided Trademark Trial and Appeal Board (TTAB) cancelled six registrations owned by the Washington Redskins football team pursuant to Section 2(a) of the Lanham Act on the grounds of disparagement. The registrations contained the words REDSKINS or REDSKINETTES and covered football-related entertainment services in Class 41. (Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan & Courtney Tsotigh v. Pro-Football, Inc., Cancellation No. 92046185 (T.T.A.B. June 18, 2014).)
The petitioners argued that the term was a racial slur, while respondent argued that the term conveys a positive association with Native American culture and heritage, as evidenced by the fact that Native Americans use the term in connection with their own sports teams.
Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), prohibits registration of marks that consist of or comprise “matter which may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” A challenge under Section 2(a) requires that a “substantial composite” of the affected group find the term disparaging at the time of registration of the term. The TTAB noted that a substantial composite is not necessarily a majority of the referenced group, and what comprises a substantial composite is a fact to be determined at trial.
In 1999, the TTAB had held that the same marks were disparaging to Native Americans and ordered the registrations cancelled. Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d 1705, 1743 (T.T.A.B. Apr. 2, 1999). On appeal, the U.S. District Court for the District of Columbia reversed, holding that the finding of disparagement was not supported by substantial evidence and that the doctrine of laches precluded consideration of the case. The U.S. Court of Appeals for the District of Columbia Circuit affirmed the district court’s ruling based on the laches defense but did not address the TTAB’s finding of disparagement on the merits.
In the current proceeding, the TTAB found the laches defense inapplicable where, as here, “plaintiffs are created every day as individual members of the referenced group mature to age 18,” the age of majority necessary for standing, among other factors.
Turning to the merits of the case, the TTAB set forth a two-prong test for disparagement: “(a) [w]hat 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? [and] (b) [i]s the meaning of the marks one that may disparage Native Americans?”
As to the first prong, the TTAB found that the term REDSKINS retained the meaning Native American when used as the name of the respondent’s team. The TTAB was not persuaded by the respondent’s argument that the term had developed a secondary or alternate meaning denoting a football team.
With respect to the second prong, the TTAB found that the record established that a “substantial composite” of Native Americans found that the term REDSKINS was disparaging. The TTAB considered the entire record from the Harjo case, which the parties stipulated into evidence.
The finding of disparagement was based largely upon a 1993 resolution issued by The Executive Council of the National Congress of American Indians (NCAI), the country’s largest and oldest Native American organization. The evidence established that throughout the relevant time period, NCAI represented the interests of approximately 30 percent of Native Americans. That 30 percent constituted a “substantial composite” as required for cancellation of a mark under Section 2(a) of the Lanham Act.
The respondent’s evidence included letters from Native Americans approving the REDSKINS name as a positive association, as well as evidence of Native Americans’ using the term in connection with their own sports teams. However, the TTAB noted that once it had established that a substantial composite of the referenced group found the term disparaging, the mere existence of differing opinions could not change the conclusion.
Having found that a substantial composite of Native Americans found the term REDSKINS disparaging in connection with the respondent’s services at the time of registration, the TTAB ordered the cancellation of the six registrations as required under Section 2(a).
It is significant to note that the challenged trademarks will remain registered until all appeals are exhausted. The TTAB and the USPTO took great care to clarify that even if the marks are cancelled, the Washington Redskins team may continue to use the REDSKINS marks at common law.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
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