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Fight On, Fight On? USPTO Cancels Six WASHINGTON REDSKINS Trademarks

Yesterday, the Trademark Trial and Appeal Board (TTAB) of the US Patent & Trademark Office (USPTO) cancelled six registrations related to the Washington Redskins professional football team. The TTAB found the marks violated Section 2(a) of the Federal Lanham Act, which bars registration of trademarks that may disparage persons or bring them into contempt or disrepute.

While this is a setback for Pro Football, Inc., the owner of the WASHINGTON REDSKINS trademarks, it is certainly not the end of the story. The team has already announced that it will appeal the decision to federal court. Furthermore, the TTAB decision only covers the right to register the trademarks. It does not impact the team’s right to use the trademarks, nor does it impact the team’s common law trademark rights, which are based on use of the marks in commerce.

To be disparaging, a “substantial composite” of the Native American population (rather than the general American public) must have found the term “REDSKINS” disparaging at the time of registration. The TTAB found that while the term “REDSKINS” may also signify the professional football team, the term retains its meaning as a reference to Native Americans when used in connection with the Washington Redskins’ services. This is particularly true because the team uses Native American imagery to promote its services.

Next, the TTAB found that “at a minimum, approximately 30 percent of Native Americans found the term REDSKINS used in connection with [the team’s] services to be disparaging,” which is “without doubt a substantial composite” of the Native American population. In addition, the TTAB held that the plaintiffs’ claims were not barred by laches (an equitable doctrine that prevents unnecessary delay in bringing a lawsuit). Specifically, the TTAB held that “[l]aches does not apply to a disparagement claim where the disparagement pertains to a group of which the individual plaintiff or plaintiffs simply comprise one or more members.” Accordingly, the TTAB cancelled registrations for six WASHINGTON REDSKINS trademarks.

This decision can be appealed to either federal district court, which results in a de novo proceeding, or to the Court of Appeals for the Federal Circuit, where the proceeding is limited to the issues and record established before the TTAB.

Notably, this is not the first time the WASHINGTON REDSKINS trademarks have been challenged. In 1999, the TTAB granted a petition to cancel the registrations. However, that decision was appealed to the US District Court for the District of Columbia, which found there was not sufficient evidence to support the finding of disparagement and that the claims were barred by laches. The DC Circuit upheld the lower court’s laches decision, finding the case was barred due to the plaintiffs’ eight-year delay in bringing suit.

In the decade following this decision, the team continued to operate under the name WASHINGTON REDSKINS despite periodic objections from the public. In recent months, however, the controversy surrounding the use of the WASHINGTON REDSKINS name greatly increased, including a prominent television advertisement during the NBA playoffs and numerous editorials in the press. This was capped off by today’s TTAB decision.

It remains to be seen how this matter will ultimately be resolved. The team has already announced that it will appeal the decision, and the team can continue to play under the name Washington Redskins next season. If the franchise ultimately decides to rebrand, there would likely be high associated costs, although presumably the team would benefit from increased sales of apparel and goods bearing the new team name and may receive positive publicity, which together could help offset the increased costs.

Arent Fox will continue to monitor developments in this matter. For more information on Arent Fox’s Intellectual Property and Sports practices, please contact Anthony V. LupoSarah L. BrunoRichard L. Brand, or Amy E. Salomon.