By Dennis Crouch
Blackhorse v. Pro Football, Inc. (TTAB Cancellation No. 92046185)
Today, the USPTO granted the cancellation of a group of trademark registrations that all include the term “Redskins” and that are owned by The Washington Redskins.
Under the law registration may be refused when a mark:
Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.
15 U.S.C. § 1052.
In the cancellation proceedings, the challengers (a group of Native American individuals), were able to establish that the mark was disparaging to Native American persons as used in relation to the Professional Football team and thus, as the USPTO writes in a press release “in accordance with applicable law, the federal registrations for the ‘Redskins’ trademarks involved in this proceeding must be cancelled.”
Perhaps the strongest defense put forward by the team owners was that the mark was old, well used, and the subject of significant investment. However, the Trademark Trial and Appeal Board rejected that argument – finding it inapplicable to the particular claimants here since none of them unreasonably delayed in bringing the cancellation action.
The TTAB decision was not unanimous – Judge Bergsman dissented – arguing that the petitioners did not provide sufficient evidence that the marks were disparaging at the time they were registered (1960s – 1990s).
Next steps:
- The team owners may ask for rehearing or may take the case to Federal Court where the Supreme Court may have the final word.
- A trademark registration is not required in order to use a mark. Thus, the team owners can continue to use the mark. In addition, trademark rights continue to be strongly protected by state law and thus, even if the decision sticks, the team may still have protection in the various states.
- Prof Rantanen also points out that the mark may still be protectable under Section 43(a) as an unregistered mark, but that the law is unsettled. One take is here: Renna v. County of Union, 2014 WL 2435775 (D.N.J. May 29, 2014).
…and before this thread retreats fully into the archives, let me add a thought that Greg Aharonian shared today:
“Apparently, when a research at 3M (Minnesota Mining and Manufacturing, which I think is a cooler name), was trying to create a sticky-but-not-too-sticky adhesive tape for automobile painters, he hit upon some form of glue and cellophane. One version was not sticky enough for the car painters, who supposedly asked “Why so Scotch with the adhesive?”, i.e., why are you being so cheap – can’t you have some more glue? (The alternative history is that one of the car painters told the 3M salesmen to go back to his “Scotch bosses” and ask them to use more glue.”
If we are to cling and stick to every slight (or perceived slight) that language carries, we will need to remove a lot more words in their evolved sense from the trademark rolls.
“Those redskins know this island better than I do me own ship.”
– Captain Hook (from Disney’s Peter Pan, 1953)
When he hatched his plan to kidnap Tiger Lily, Captain Hook would not have employed REDSKINS if it was a disparaging term. If the term was widely acceptable in the 1950s, it’s unlikely the term was seen as disparaging by the 1960s.
link to supremecourt.gov
Waaa-Hooo.
Hmmm, was that meant in a disparaging manner? I can not tell. Should I be offended? Can I choose to be offended?
Choose as you will.
After all, you are merely a figment of my imagination.
lol -not when my whining can remove your legal rights 😉
LOL, it would appear that you are also a figment in your own imagination.
?
As a member of the Cherokee Nation, I am happy to see this decision. There are a lot of commentors below that obviously didn’t read the opinion. Of course the Washington Redskins have never intentionally personally disparaged Native Americans. Basically, the word “redskin” was found to be disparaging at the time of registration. Now, if the Redskins had jettisoned the Native American tie, then they would have been ok, but the evidence showed that the term “redskin” as used by the Washington Redskins does and has always referred to Native Americans.
I personally do not find imagery of Native Americans used as sports mascots offensive, however, you cannot have your team name be a disparaging term for an entire group of tribes and people that have been lumped together by their skin color. That’s just rude.
Redskin is a pejorative when used to refer to Native Americans. You would never see a news article or story refer to Native Americans as redskins. The Washington Redskins tie their use of the term as a mascot to Native Americans. The mark should fall.
There are differing opinions among Native Americans. I think that most Native Americans who don’t find the term offensive either 1) appreciate the imagery and honor of having Native Americans represented as a mascot (not including you, Chief Wahoo) and so overlook the slur or 2) accept that the Washington Redskins have essentially redefined the term to not be offensive.
I do believe that the team means to honor Native Americans. But to many Native Americans the honor comes with too much vinegar.
One of your last points is exactly what the majority opinion misses. The term “Redskins,” as used with the football team, was been completely refined. Even if that term were used in a derogatory manner in other contexts, it is not so when used with a NFL team — and the evidence failed to show that it was offensive at the time of registration. All of the media reports essentially ignore the valid points made by the dissenting judge.
ipwatchdog.com has a good article on this decision regarding the legal basis of the decision. I remember reading this case in law school many years ago.
There are many sides to this. It does appear that legally there is no basis to invalidate the mark. And, it also does appear likely that the mark is meant to take on a different meaning for the football team. After all, each of the football players is a Redskin (or Raider or Panther) so the name cannot be meant to be so bad as it is what they are calling themselves.
But, in my opinion, in equity, this mark should go. The law may not support the mark going, but if some people that had their country taken from them and genocidal acts committed against them are offended by the mark, then I say get rid of the mark.
Of course, what should really happen is the owner should just change the mark and say something like times have changed and now we realize that the mark wasn’t such a good idea. I remember Billy Kilmer. I bet ole Billy would support changing the mark. Wasn’t Riggins part Native American? I wonder what he would say.
Back in that day with the old Redskins I bet they would have said something like, “well, we don’t want to call ourselves Redskins if it is offending the native Americans. That takes all the fun out of it.”
Now that sequence in Peter Pan is whole other problem.
This: “But, in my opinion, in equity, this mark should go. The law may not support the mark going, ”
I admit I have a tough time writing the words “I agree with NWPA” about anything, but I do agree here.
I understand what the law says, and based on the dearth of evidence of disparagement (at the time(s) of registration), I think the law demanded a different outcome than we got here.
.
But overall, I do not think that any party should be able to appropriate and arrogate to themselves the commercial use of any identifying word of an ethnic or racial characteristic.
That includes Indian names or other (“Fightin’ Irish” – why do the Irish fight so much? Oh, yeah, they’re all drunkards).
Even as to those names used with “permission” – the shining example of the Seminoles comes to mind. The officials of the Seminoles have blessed the school’s use and together the two parties reported take much mutual pride in their association. But was every last man jack who can claim to be a Seminole consulted? (Perhaps I go too far here, but how do any “officials” or other governing bodies give permission for an entire group identity??)
Your comment epitomizes modern America. “Yes, we know this is not in accordance with the law, but because we feel so strongly righteous about it, it doesn’t matter.” Do let me know how you and Barry are feeling tomorrow and every day thereafter so that I may know how to order my conduct for the day.
Rule of law what?
Contrast with another Cherokee at 6.2.2.3.2.
The feelings of the few control the expression of the many.
Expression is not explicitly being controlled by mark cancellation.
The commercial value is certainly being diminished, though. This may lessen the Washington Redskin’s use of the name, if the commercial value in it becomes diminished.
But it actually frees others to use it in any way they choose (including commercially) – assuming the decision is not again overturned, of course.
“chilled” – feel better?
““chilled” – feel better?”
Not at all, actually.
Perhaps you could come up with a rational explanation for how a decision by the government to stop prohibiting others (than the registrant) from using a word or phrase in commerce “chills” speech related to that word or phrase?
easy – the chill is the self-evident commercial effect.
That’s hilarious. Seriously. And you accuse NWPA of drinking koolaide?
You remind me of marketers who, when confronted with patent expiry and the terrible, terrible spectre of market competition, whine at me to “just renew the patent!, waaa-waaa-waaaah!”.
🙂
How is pointing out a real chill “drinking the koolaid?”
This is nothing at all like “extending the patent” as anyone should know that the patent deal, the Quid Pro Quo, is for a limited time.
Try again.
“try again”
Okay, to be plainer for you. I disagree that loss of market exclusivity (and its attendant commercial effects) are not an example of governmental chilling of speech.
Like the beat, the speech goes on (and on, and on, and on). It is not chilled.
One’s ability to profit from the speech is affected; there we have no argument.
P.S. see Mark’s follow-on post. Assuming he is correct, there’s even less of a commercial effect in registration cancellation than I would otherwise have supposed.
Whoops! Oh, for the want of an EDIT key or at least a Preview function.
I double-negatively gorked my second sentence; please read “are not” as “is”.
You clearly do not understand the scope of what “chilling” means.
The government is involved here, and even business speech does get some first amendment protection, so you do NOT get to glibly dismiss “chilling” just because that chilling has a commercial aspect.
“even business speech does get some first amendment protection, so you do NOT get to glibly dismiss “chilling” just because that chilling has a commercial aspect.”
Nice straw man. See straw man burn. Burn, burn, burn nice strawman, burn.
P.S. I’m one of those guys who closely aligns with the righties on the Court when it comes to commercial speech, so not only did I not make the argument you tried to put into my mouth, I would not have.
That’s not a strawman – its an on-point rebuttal to your comment.
Mellow,
Another non-strawman for your consideration: (it might be behind a pay wall
link to nationallawjournal.com
In essence this supports my post at 14.3.1.1.1.1
But in contrast, see also:
link to washingtonpost.com
In which while the First Amendment issue is raised, the ability to win on that issue is questioned.
Please, it is in no way a rebuttal to anything I wrote. You put nonsense words into my mouth with “you do NOT get to glibly dismiss “chilling” just because that chilling has a commercial aspect.”
I neither said nor implied anything of the sort.
This is now past strawman and on to outright prevarication.
Good day.
Prevarication?
B$
Your words: “ I disagree that loss of market exclusivity (and its attendant commercial effects) are not an example of governmental chilling of speech.”
My reply is directly on point to this statement.
If you had meant to say something else, by all means retract your comment and say what you meant to say.
“My reply is directly on point to this statement.”
Pure, unmoderated bunk. Your accusation that I somehow glibly dismisses chilling of speech merely because it is commercial is plainly a lie.
Now, if you’d like to retract your statement “you do NOT get to glibly dismiss “chilling” just because that chilling has a commercial aspect” and admit you were putting words into my mouth, fine.
Are you denying those are your words?
Really?
Let me put it this way:
Do you agree with me or not?
hmmmm… something about government action that has the effect of “chilling” speech…
…where have I heard that before….?
I would just like to point out that the evidence has to show that the mark was disparaging at the time of registration — ’67 is the earliest.
Most every comment here and on the airwaves thinks the issue the TTAB had to decide is whether the marks ARE disparaging NOW.
Now tell me, please, just how a native American not even born in ’67 even has STANDING to allege that in ’67 they were disparaged?
On standing, we have “Amanda Blackhorse is a member of the Navajo Nation. She testified that she considers the term REDSKINS in respondent’s marks to be derogatory and is offended by it.”
So what? Why is this even relevant to the legal issue involved here? We are not cancelling the mark because society has changed and the mark has become offensive. That is not the legal standard.
The right of cancellation is held, if at all, by the people disparaged by the registration at the time it was registered. Those people said nothing and did nothing. They stood by. They should no longer have a right to sue.
Newcomers who have grown thin skin should not have a right to assert a cause of action held by their ancestors when those ancestors did not complain.
Now if the law were different such that if a mark BECOMES disparaging, then everything that happened in this case might be legitimate. But nothing seems right here. The action of the TTAB seems instead to elevate current equity and morality over the law.
It’s called progress, knuckle dragger. Deal with it or move aside.
Since when have progressives cared what the law was?
Since when have progressives cared what the law was?
You gotta love your patent txbxggers, folks. They never fail to amuse.
Ned, this is Malcolm calling you a txbxhger – love that “swagger” now?
I don’t think he is, anon.
I am discussing the law, not the facts of this case. I will assume for the sake of argument that the term is in fact offensive today to a significant number of native Americans.
It is just this, the proof has to be that at the time of registration was it offensive. Now, if there were contemporaneous complaints, that would be the evidence one should prove. DanH says that evidence exists.
Next, who has standing? I think it has to be someone from that era. I don’t know how a contemporaneous offended person has standing if they are not legally harmed by a registration that was not offensive when registered.
Now, times change and things that were not offensive then can become offensive now. Perhaps congress should consider changing the law. But the TTAB does not have that power.
Prediction: Overrule on evidence. Overrule on standing. Overrule on laches.
Reverse your time frames.
Evidence (perhaps not conclusive) was submitted at time of filing.
Currently, I would argue that a rational and reasonable person could not be offended.
Your post has these two exactly reversed.
You may very well still have a standing problem based on the alleged wrong. A past wrong may not be redressable today (for argument’s sake, assume that the word is no longer considered ‘bad’). The harm alleged then – to meet the statute was not the same harm concurrently experienced by the plaintiff. As you pointed out – that’s a physical impossibility. The plaintiff – claiming that statutory harm (in order to have a statutory violation) then does not have immediate harm and standing fails.
Ned,
As backup to my suggested timing switch, peruse this article:
link to willamette.edu
You mistake political correctness for progress – don’t drink the koolaid, and do read 1984 (merely removing the words as a form of societal control).
Now tell me, please, just how a native American not even born in ’67 even has STANDING to allege that in ’67 they were disparaged?
I think you’re combining two separate issues, Ned. The standing comes from the harm that’s caused now. To determine whether the statute requires cancellation, there has to be evidence that it was disparaging in ’67. There was evidence on that point, including some dictionary evidence.
“There was evidence on that point, including some dictionary evidence.”
To state this more carefully, as characterized by the dissent the 1967 evidence consisted of the 2 dictionary definitions.
The dictionary definitions (or at least one of them) included a usage guide that said the word is “often offensive” as applied to Native Americans.
DanH, I assume you agree that any right of cancellation arose in ’67 upon registration. The people at that time who were disparaged did not act.
People today complain, but times have changed. People seem to have a lot thinner skins today than then, and take offense when no offense was intended.
I cannot see how the complaints of a different people, even though related, have to do with a legal claim that arose a long time ago.
As I said, if the question of cancellation turned on whether people today were offended, the petitioners here would have standing. I just do not think the current petitioners have standing because the have not alleged to be related to anyone who was offended at the time.
Ned – your argument may work if there was evidence that in the intervening time, redskin was no longer disparaging (and then maybe became disparaging again (at least to the petitioners)). Petitioners showed evidence that it was disparaging at the time and was always offensive.
So they satisfied the evidentiary req. As to standing, there doesn’t seem to be any rule that requires the petitioner to have suffered the harm at the time of registration personally. And it makes sense to not so limit the challenge because the harm from a disparaging mark is ongoing.
You are assuming your own conclusion TLG.
anon – Not really.
Standing is just whether the petitioners can bring the challenge, right? So, you could read this as “assume they satisfy the evidentiary requirement.”
My argument, like others have said, is that the standing requirement is separate from the evidentiary requirement. Since the evidentiary requirement is settled (as assumed), we know the mark is disparaging. By the statute and even the D.C. circuit opinion, it’s not apparent that standing is predicated on suffering the harm personally at the time of registration. The D.C. circuit said that the laches period starts when the potential petitioner turns 18 years old, not only from when the registration occurs. Thus, the D.C. circuit contemplated other potential petitioners that would have standing.
I see “harm” as the continued registration of a disparaging mark (there is no time limit in the statute to bring an action under the relevant passage). If you see the “harm” as the initial registration, then that changes things, but since there is no time limit to bring an action, then I don’t think this is right.
That’s the basis for why I note that there would be an interesting argument IF the mark was no longer disparaging or lapsed in its disparagingnessocity. The statute on its face would support cancellation of the mark, but the petitioners would arguably not have standing if the harm had passed (even if they personally felt affronted).
I’m not sure why your flippant remark deserved such a lengthy explanation, as these ideas are easily perceived from my original comment.
“Standing is just whether the petitioners can bring the challenge, right?”
lol – take a remedial course – there are elements to be met in order to “can bring.”
And again – your “as assumed” is, well, assuming (kind of like I said). You are assuming the conclusion you want. Still.
TLG, if they suffer harm from the mark now, it should be cancellable based on that harm. The petitioners should not be required to prove that the mark that disparaging long ago, because it is self evident that virtually no one considered it disparaging when registered. But times change.
There is an assumption in the statutory framework that marks cannot become disparaging. That assumption might be and is probably wrong.
But statutes are statutes. If the registration was not disparaging at the time of registration, long ago, the petitioners, born generations later, have not suffered any legal harm and do not have any standing.
Moderators, please approve the above post.
Ned – As I pointed out to you, you need to flip your time references.
“because it is self evident that virtually no one considered it disparaging when registered”
The PTO disagrees with you. Twice.
“no one” – you’re talking about those that are disparaged, right? Not everyone in the world?
I appreciate that the PTO may have been creative (hearsay be dambed) to align the elements, but it came up with the evidence that the term was and is disparaging and attributed it to the time period of registration.
“The PTO disagrees with you. Twice.”
And interestingly, the appeals court corrected the PTO the first time around, and as many have indicated, with the may faults with the evidence used, it is highly likely that the appeals court will correct the PTO the second time around as well.
Creativity with evidence is not necessarily a good thing when you have a court to review that “creativity” under the rule of law.
Do you know Mark Thornton, by chance?
Newcomers who have grown thin skin should not have a right to assert a cause of action held by their ancestors when those ancestors did not complain.
Actually, they did complain, Ned. Nobody listened.
DanH, well such evidence of actual contemporaneous complaints is what this case needed.
Since you seem to have that evidence, why don’t you cite it.
Ned,
See my link below (obtained from the link provided by Prof. Crouch above).
link to washington.cbslocal.com
Some interesting points in this story. Some tidbits – Annenberg did a survey of ~ 800 self-identified Native Americans and 90% said they didn’t find “Washington Redskins” offensive.
But Ms. Harjo (mentioned by MM below in the history of these suits) says if a Native American supports use of “Redskins” that this is just “a classic case of internalized oppression,” Harjo said. “People taking on what has been said about them, how they have been described, to such an extent that they don’t even notice.”
So she says they’ve been fooled by the palefaces into thinking they’re not offended.
I should also add that Ms. Harjo had some criticisms of the Annenberg survey itself, arguing that unless the survey identified which tribe a person belonged to and asked whether the person was “culturally or socially or politically native”, then the person does not really represent a native opinion.
The slippery slope of finding that “right group” of people to be offended.
Note my comments to J on this point.
“Raising awareness” and “recalibrating” what is and is not “offensive” (for everyone else) is one of the hallmarks of political correctness.
But according to Malcolm, “political correctness” is apparently not “real.”
Consider the source.
This seems like a classic case of a “heckler’s veto” (search for the term in Supreme Court opinions by Rehnquist or OConnor) where the USPTO sided with the heckler.
Not to be confused with the similar notion of the Crybaby’s Veto (See post 3.2.2.1.1 below). 😉
Maybe true anon. But, stfw.
NWPA – stop drinking the political correctness koolaid and think for yourself.
anon — stop being so callous. Think about those educated Native Americans that are trying to reclaim their dignity. The horror of the past, in this case, trumps the law. The SCOTUS should just take this case and invalidate the mark in equity.
Why doesn’t Lemley write a paper that redefines offensive at the time the mark was issued to include changes that come in the future. Lourie could psychotically chant from Lemley’s paper and tear up a Redskin uniform in court.
Lovely glass of political correctness you have there NWPA. Hmmm, I’m “callous” because I don’t tow the line.
Thin skin much?
Wow, Ned arguing the law. Next thing we know Lemley will argue the law and the world will come to an end. I thought you anti-patent league members’ motto was, ” ’cause.”