Native Americans are not known for shying away from a battle (legal or otherwise) if you offend them in some way. And the recent conflict with the Washington Redskins is no exception. Five Native Americans sought cancellation of six federal trademark registrations held by the professional American football team, claiming the trademarks were disparaging of Native Americans. And the Trademark Trial and Appeal Board (TTAB), which is an independent administrative tribunal within the U.S. Patent and Trademark Office, has decided that the Redskins trademarks should be cancelled. The primary question now is what this means for the team going forward.
Before we get into that, though, a little history. This battle began in 1992,when Suzan Harjo led a group of Native Americans against the Washington, D.C.–based team in Harjo et al v. Pro-Football Inc. Harjo and six petitioners won that case before the TTAB in 1999 but lost on appeal. A federal judge in the District of Columbia ruled on appeal that the evidence presented was “insufficient to conclude that during the relevant time periods the trademark at issue disparaged Native Americans” and that a majority of the petitioners had waited too long to assert their rights.
And so, Amanda Blackhorse and four other Native Americans recently took on the cause in Blackhorse et al v. Pro-Football Inc, hoping to strip the federal trademark rights from the football team.
And that’s exactly what they’ve done (for now, at least). In a 2-to-1 decision, the TTAB found that the Blackhorse petitioners carried their burden of proof. By a preponderance of the evidence, the petitioners established that the term “Redskins” was disparaging of Native Americans. The board said that said that “the recognition that this racial designation based on skin color is disparaging to Native Americans” is demonstrated “by the near complete drop-off in usage of ‘redskins’ as a reference to Native Americans beginning in the 1960s.”
Does this mean that the team has to stop using their name and logo, though? No. As Bob Raskopf, a trademark lawyer for the team, said: “We’ve seen this story before. And just like last time, today’s ruling will have no effect at all on the team’s ownership of and right to use the Redskins name and logo.” This is because all the TTAB can do is cancel trademark registrations and take away the legal protections that come with it (such as the legal presumption of ownership and the ability to record registration with U.S. Customs in order to prevent importation of infringing goods). The board cannot, however, stop the team from using their marks, as the Redskins do still have common law rights in their trademarks. This means that their rights will be based on use and not on federal registration.
What’s more, the team will appeal the TTAB’s decision in federal court. And just like in the Harjo case, the decision could be overturned. “We are confident we will prevail once again, and that the Trademark Trial and Appeal Board’s divided ruling will be overturned on appeal,” Raskopf said in a statement.
So the team can still use their name and logos and can assert common law rights in the trademarks. And even if it turns out that the Redskins ultimately lose their rights on appeal, I’m not sure the petitioners in this case are going to get what they want - presumably less use of the term “Redskins” and the logo that goes with it. Without the ability to police their marks, the Redskins will have to sit idly by while others start selling merchandise with the “disparaging” trademarks, which probably means more Redskins merchandise will be available to consumers.
JENNIFER WILLIAMS is a recent law school graduate who writes about fashion, the legal avenues available for protecting it, and the ways in which the laws are falling short. She is currently awaiting admission to the NY State Bar. For more from Jennifer, follow her on Twitter.