The sports world is buzzing today about the United States Trademark Trial and Appeal Board’s (“TTAB”) decision (find the Board’s ruling here) to cancel Pro-Football, Inc.’s registered trademarks (there are many) for the REDSKINS mark. We’ve been really amused by some of the media’s reporting on the case. So, a few observations as to what the TTAB decision does not mean are in order.
Most important, the TTAB’s decision does not mean that Pro-Football may not use the REDSKINS mark. A few media outlets got that aspect of the decision completely wrong. The TTAB only has power to determine whether or not a mark is entitled to federal registration. That’s it- nothing more. So, while Pro-Football may in fact decide that it is bad business to continue using the REDSKINS mark, there is no legal requirement that it cease use of the mark.
Further, the TTAB decision does not mean that anyone can use the mark and that Pro-Football may not enforce the mark. Some media outlets also got that aspect of the decision completely wrong. While it certainly is easier to enforce a trademark if the mark is federally registered, registration is not necessary. Trademark owners can still enforce trademarks that are not federally registered. They just have to do a bit more to prove their case if the mark is not federally registered.
With that said, let’s turn to the TTAB’s opinion. It was long and it was massive. That was to be expected, though, in light of the tortured procedural history of the case and its prior companion case. The prior companion case, Harjo et al. v. Pro Football, Inc., (“Harjo et al.”) addressed almost identical issues (but with different plaintiffs, or “petitioners” in TTAB parlance) and was pending at the TTAB for seven years from September 1992 through to 1997. That TTAB case had been suspended at different points while various issues in the case were brought before the federal courts, including the United States Supreme Court. Although the TTAB had ultimately cancelled Pro-Football’s REDSKINS marks in Harjo et al., on appeal, the District Court ruled that the TTAB’s decision was not supported by substantial evidence and it overturned the cancellations. In May 2009, the District of Columbia Circuit Court affirmed the District Court’s ruling. The Petitioners, Harjo et al., then appealed to the United States Supreme Court, but the Court denied certiorari in November 2009. The TTAB action in the prior case was officially terminated in May 2010 with a win for Pro Football, Inc.
The more recent REDSKINS cancellation case was filed in 2006 by Amanda Blackhorse et al. (the “Blackhorse et al. case”) The Blackhorse et al. case had been suspended while the Harjo et al. case was pending. Also, both parties in the Blackhorse et al. case agreed to use the evidence from Harjo et al. in their case. Notwithstanding its prior decision in the Harjo case, the TTAB found for the petitioners in the Blackhorse case on June 18, 2014 and decided that cancellation of the REDSKINS trademark registrations was appropriate.
The TTAB’s decision to deviate from the prior Harjo decision was based, in part, on its stance that the appeals court had only addressed the issue of laches in the prior case and that the main issue of disparagement had allegedly not been addressed by the appeals court in Harjo et al.
The TTAB then went on to its task of determining whether or not the REDSKINS mark is in fact disparaging. Section 2(a) of the Trademark Act (15 U.S.C. 1052(a)) prohibits federal registration of any mark that, among other things, “disparages” persons, institutions or beliefs. The TTAB used a two-step inquiry to make this determination. The first part of the inquiry centered on what is the “meaning of the matter in question” as it appears in the marks and as the marks are used in connection with Pro Football, Inc.’s goods and services. The TTAB found that the “meaning of the matter in question” referred only to Native Americans. Next, the TTAB addressed whether the meaning of mark was disparaging to native Americans. The parties each presented evidence and expert reports as to the general analysis of the word, “REDSKINS” and also how the “referenced group” (i.e. Native Americans) viewed the word.
In doing so, both parties and the TTAB spent a lot of time and paper raking over various dictionary definitions of “REDSKINS”. Their major focus, though, was not on each dictionary’s definition of the term, but rather on whether or not the dictionaries noted that the term, “REDSKINS,” was offensive. Before 1965, none of the cited dictionaries noted that the term was offensive. As time went on, though, more of the dictionaries noted that the term was offensive. Both parties, though, noted that “sociopolitical groups” often applied pressure on the editors of dictionaries to add a note regarding the term’s offensive character.
The TTAB went on to look over some newspaper titles and excerpts from the late 1800’s showing the term “REDSKINS” being used in a disparaging manner. It also considered a more current database presented by Blackhorse et al. that cited various sources using the term, REDSKINS. The vast majority of those fairly current citations used REDSKINS to refer to sports and football teams. Interestingly, though, the TTAB did not view this evidence as supporting the view that the term had come to have a meaning separate from the offensive meaning. For example, in a similar trademark case, the TTAB found that the mark SQUAW VALLEY was not offensive because people had come to associate the term with the geographic ski area, and not with an offensive word for a native American woman. The Board’s take on Blackhorse et al.’s database evidence is curious, particularly in light of the fact that both parties agreed that, in the past thirty or so years, the term “REDSKINS” was being used primarily in the sports context. In fact, the TTAB noted that only 2% of references in the database referred to something other than sports.
The TTAB then went on to grind away at determining whether a “substantial composite” of the “referenced group” was offended by the REDSKINS mark. The petitioners, Blackhorse et al., did not need to show that a majority of native Americans are offended by the REDSKINS mark, only that a “substantial composite” of them are. To show this, Petitioners presented a 1993 resolution passed by the Executive Council of the National Congress of American Indians (“NCAI”). The resolution expressed NCAI’s intent to cancel all registered marks comprising the term “REDSKINS”. Petitioners also produced 19 letters opposing the team’s use of REDSKINS that were written by native Americans to Pro Football Inc.
However, the record also showed that some tribes had written to Pro-Football, Inc. in support of the team’s use of REDSKINS and some other tribes themselves used the term REDSKINS for their own teams’ names and mascots. All in all, though, the TTAB found that a “substantial composite” of native Americans were offended by Pro Football Inc.’s REDSKINS mark. This finding appeared to be based primarily on NCAI’s position and its claim that it represented the majority of native American tribes.
As in the earlier Harjo et al. case, Pro Football also asserted a laches defense. In other words, it claimed that, even if the term REDSKINS is found to be disparaging, Pro Football had been using the mark for so long that it would be unfairly prejudiced by the Petitioners bringing their case at this point and canceling Pro Football’s mark. The TTAB disposed of the laches issue by noting that laches is an equitable defense that, in the TTAB’s view, does not trump “human dignity” issues. The TTAB’s laches analysis does address some pertinent aspects of a laches defense. However, the Board’s “human dignity” reasoning is curious in light of established law concerning disparagement. Whether a mark is or is not disparaging must be determined at the time the mark was registered. If the mark is found to not have been disparaging at the time the mark was registered then there are no grounds to cancel the mark (at least with respect to disparagement). Thus, in our view, the TTAB’s “human dignity” comment is a bit of a reach since a potentially disparaging mark could still be registered if the mark was not disparaging at the time of registration, notwithstanding any potential affront to “human dignity” at a later time.
The TTAB also noted that the America Invents Act of 2011 changed the venue for appeals of TTAB decisions. Under the AIA, appeals to the district court from Trademark Office inter partes decisions will now go to the U.S. District Court for the Eastern District of Virginia, rather than to the District Court for the District of Columbia, as in the past. The TTAB saw this as a significant change that affects any weight accorded the prior decision in the Harjo et al. appeals.
Way at the end of that massive TTAB decision in the Blackhorse et al. case is Judge Bergsman’s dissent. Judge Bergsman discusses many pertinent points in his dissent. First, Judge Bergsman states that the Board did not have reliable evidence to corroborate how many native Americans were represented by activist group NCAI’s resolution regarding the REDSKINS mark. It could be argued that the TTAB took a bit of a shortcut by finding that NCAI’s beliefs were indicative of a “substantial composite” of native Americans. Or as Judge Bergman puts it:
One need look no further than gyrations the majority employed to establish the membership of the NCAI”
Another important point brought up by Judge Bergsman is one of timing. Remember- when assessing a disparagement claim, the relevant timeframe is the point at which the mark registered. Judge Bergsman is of the opinion that the TTAB failed to properly consider this timeframe and improperly considered some of the Petitioners’ evidence to be relevant when it was not. Thus, it is possible that, on appeal, some of the evidence supporting the TTAB’s decision may be found not relevant.
All in all, disparagement in the trademark context is a bit analogous to insanity. We may see someone who is very strange and feel that, certainly, that person is insane. But in the legal context, ‘insanity’ has a precise and technical meaning. And so it is with ‘disparagement’ also. While many people may rightfully feel that the term “REDSKINS” is offensive, ‘disparagement’ also has a very specific and technical meaning in the trademark context.
As for the majority TTAB decision to cancel the REDSKIN marks, it appears that Pro Football, Inc. will appeal. We’ll have to wait until then to see if the majority opinion, while well-meaning and not without good points, was nonetheless a bow to political correctness. What do you think?