Blackhorse v Pro Football, Inc, TTAB Cancellation No 92046185, 18 June 2014, available at http://pub.bna.com/ptcj/TTABBlackhorseJune18.pdf
Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu199
The US Patent & Trademark Office's Trademark Trial and Appeal Board (TTAB) cancelled six registrations of trade marks incorporating the word ‘Redskins’, used by the Washington Redskins football team. While the team is not barred from using the marks, it will be denied legal recourse under trade mark law in cases of infringement, depriving the marks of much of their commercial value.
Legal context The Lanham Act 15 USC s 1052(a) is responsible for the legal regulation of trade marks in the United States. Section 2(a) of the Act prohibits the registration of any word that is disparaging of ‘persons’, providing as follows:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—Facts
(a) 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. …
The Redskins case considered the validity of marks registered between 1967 and 1990. Its history is properly traced to 10 September 1992, when a case on this issue was first initiated by Suzan Harjo and six other Native Americans, who filed a petition seeking the cancellation of the marks (Pro-Football, Inc v Harjo, 415 F 3d 44 (DC Cir 2005)). After seven years of litigation, the TTAB cancelled the registrations. This decision was appealed, and eventually dismissed, on the grounds of laches: the Native American plaintiffs, the court said, had waited too long to bring the action. An issue regarding the evidence presented in the case also arose, with a suggestion that it might be insufficient to show that the term ‘Redskins’ was derogatory; but no ruling was made on the merits, and it never received a response (TTAB decision, pp. 4–6, ‘Prior Litigation’). Harjo was controversial and, in the case before it, the TTAB had emphasized that laches should not apply to claims involving public interest issues. It also allowed the plaintiffs to resubmit the evidence first put forward in Harjo in support of their claim.
The TTAB's examination of the case was closely tied to the earlier disposal of Harjo's case. The Board noted the continuity between the earlier litigation and the present case, and, in the interest of efficiency, it allowed the re-submission of the ‘voluminous’ documentation from the previous case as evidence in the current dispute. Indeed, the majority effectively attempted to correct what it perceived as errors in the Harjo decision. In contrast, the lone dissenting voice on the Board argued that the evidence amounted to ‘a database dump’, and that it was insufficient to establish that the term ‘Redskins’ was disparaging to Native Americans at the relevant time when the registrations were made.
In determining the validity of the marks using the Redskins name, the majority outlined a two-step analysis:
(i) What was the meaning of the term ‘Redskins’?
(ii) Was that term disparaging to Native Americans?
In response to the first issue, the Board was able to demonstrate, with ease, that the term Redskins was used by the football team to designate Native Americans. In doing so, it was sufficient to look at the team's own practice surrounding the name. The team not only used the name ‘Redskins’, but it also had an associated image that often appeared with the word—a picture of a Native American man wearing traditional, feathered headgear. The team's cheerleaders, called the ‘Redskinettes’, had also appeared in Native American costumes during games. On one sample occasion, their pictures appeared with the caption ‘Dancing Indians’, and the notation, ‘Here are the Redskinettes all decked out in their Indian garb and carrying Burgundy and Gold pom-poms’. Press guides for the team displayed Native American imagery on their covers. Accordingly, there could be no doubt that the name represented anything else.
In dealing with the more complex issue of whether the term was disparaging, the Board attempted to determine not only whether the term itself was at fault but also how the use of the term by the team might affect its derogatory character. It pointed out that the character of the term could be altered by the use, which could either infuse a derogatory flavour into a neutral term, or neutralize an offensive term. It concluded that the use of the term did not have an impact on its objective meaning—and, in particular, that the team's ‘honorable intent’ or otherwise non-derogatory use of the term—was essentially irrelevant to the issue facing the Board.
The Board then examined what exactly the character of the term ‘Redskins’ might be. In this regard, it was confronted with substantial evidence on both sides, as each party, in typical style, tendered its own expert witness on the nature of the word. The experts traced the evolution of ‘Redskins’ through the decades of the 20th century, examining dictionary definitions of the term and whether it was designated in dictionaries as a ‘disparaging’ or ‘offensive’ word, as opposed to a standard one. Predictably, some dictionaries identified the term as offensive, while others did not. The experts argued about the significance of these designations or omissions, in some cases pointing out the political pressures operating on the compilers of dictionaries. But the Board pointed out that much of the analysis was ‘not from the viewpoint of Native Americans’ which, in its view, was what really mattered. This simple remark represents a crucial insight from a Western legal perspective—subtle, but seismic nevertheless—in the overt admission that the point of view that matters may be one that is inherently difficult for both court and plaintiff to grasp, representing a non-Western worldview. The Board then considered the use of the term in different media, drawing an interesting inference from the fact that the term ‘Redskins’ was generally used, at times disparagingly, to refer to a group of people, but rarely if at all to an individual.
The Board considered the position of the National Congress of American Indians (NCAI), which had adopted a resolution in favor of the cancellation of the marks back in 1993. It also accepted evidence in the form of nineteen letters from Native Americans across the United States, which complained of the derogatory nature of the team's name.
The team was also able to offer evidence from Native American groups that the term ‘Redskins’ was not derogatory. A number of tribal councils from the states of Oklahoma, Washington and California had all submitted letters in the early 1990s, affirming that they did not find the use of the Redskins name by the Washington team to be offensive. Chief Taylor of the Eastern Band of Cherokee Indians in North Carolina wrote that the use of the Redskins name by a school in Naperville, Illinois was ‘a great honor for all Native Americans’.
In the end, the Board identified the key question, crucially, as whether the term disparaged ‘a substantial composite, which need not be a majority, of Native Americans at the times of the registrations’. In this regard, the majority of the Board considered the position of the NCAI to be determinative; in its view, evidence showed that it was the largest and most established body representing Native Americans in the United States and, as such, its position had to be accorded the value that was its due. The dissent, however, disagreed strongly with this approach, calling efforts to include evidence about NCAI membership ‘gyrations’: There was no order or structure to petitioners' evidence that told a compelling story or presented a coherent case. One need look no further than gyrations the majority employed to establish membership of the National Council of American Indians. It is astounding that the petitioners did not submit any evidence regarding the Native American population during the relevant time frame, nor did they introduce any evidence or argument as to what comprises a substantial composite of that population thereby leaving it to the majority to make petitioners' case have some semblance of meaning (p. 84).
The ruling of the Board effectively accepts the idea that the possibility of offence to some Native Americans is sufficient reason to cancel the registration of the Redskins' trade marks. The objections of the minority are well reasoned, but the strength of the majority's viewpoint lies in its ultimately credible suggestion that the standard of proof required in a case such as this should be somewhat lenient. Arguably, where the use of potentially derogatory racial epithets is concerned, this approach is appropriate enough. The evidence offered on both sides shows the potential absurdity of trying to establish the offensiveness of a racially-motivated term—in this case, by looking at the history of its treatment in dictionaries compiled by non-Natives—through evidence offered by non-Native linguistic experts about how non-Natives might perceive the term. The search for certainty may lead us from indeterminacy to absurdity.
From a purely legal standpoint, the approach of the Board to this conflict is an interesting one. Both majority and minority show a striking level of sensitivity towards non-mainstream points of view when it comes to the recognition and ownership of intellectual property. Where the claims of aboriginal peoples around the world are concerned, courts in countries like the United States, Canada and Australia have had the greatest difficulty accommodating the possibility of an alternate worldview (see eg the well-known Australian case of Yumbulul v Reserve Bank of Australia  21 IPR 481). No one can accuse the Board of failing to stretch its imagination in that direction. It did so in spite of an evidently clumsy and disorganized approach to the presentation of the case, perhaps with the greater goal of recognizing a principle that was, in its view, in need of support. In this sense, notwithstanding the imperfect fact scenario, the case represents a benchmark for a new understanding of the relationship between intellectual property and traditional perspectives and, indeed, traditional knowledge.
The Board's decision does not mean that the Redskins team needs to change its name; what it does is limit, if not destroy, the ability of the Redskins to fight the production of counterfeit merchandising or other infringements of its marks. But this begs the question, why wouldn′t the Redskins want to consider changing their name? As a matter of public relations, the Redskins name seems like more of a liability than an asset: not only has it cost the team money to defend it, but it has also led to years of controversy, ugly accusations, and animosity from at least some interested parties. On the other hand, a change of name, and a corresponding change of strategy, could open the doors wide to a new opportunity. As Jeremy Phillips notes,
‘[h]eritage is history, but it is not the same as goodwill and it cannot of itself create or preserve conditions of profitability for a brand’.The gesture could generate immense positive publicity and widespread goodwill by representing the team's broader support for non-discrimination and human rights.
A win–win situation? Apparently, the Redskins don′t think so. Their owner has filed an appeal, arguing that the name is a ‘badge of honor’ that ‘celebrates Native Americans’.