Redskins Ruling is Consistent with TTAB Precedent
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Intellectual Property
Redskins Ruling is Consistent
with TTAB Precedent
This article was originally published in Law360 on July 29, 2014.
by Patricia Cotton
In Blackhorse v. Pro-Football Inc.,1 This is not the first time that the
the U.S. Patent and Trademark board has considered whether a
Office once again canceled various mark is disparaging to a particular
registrations for trademarks used by group, nor is this the first time the
the Washington Redskins football board has considered whether these
team as being disparaging to Native particular marks are disparaging to
Americans. While this highly Native Americans.
publicized decision may have taken
Patricia Cotton some by surprise, the holding is in Harjo Line of Cases
Intellectual Property line with several other recent PTO In 1992, a different group of Native
+1.650.233.4758 decisions involving the Lanham Act’s Americans filed a petition to cancel3
patricia.cotton@pillsburylaw.com prohibition on the registration of the same registrations on virtually
disparaging marks, decisions which identical grounds. Pro-Football
Patricia Cotton is an attorney in Pillsbury’s received far less media attention and denied that the Redskins marks were
Silicon Valley office. public comment. disparaging and asserted various
affirmative defenses, including laches.
On June 18, 2014, the Trademark Trial After striking all of Pro-Football’s
and Appeal Board issued a decision in affirmative defenses, the board
the second proceeding brought by a issued a decision on the merits in
group of Native Americans to cancel 1999, holding that the marks were
registrations for various “Redskins” disparaging when registered and
marks used by the National Football ordering the registrations canceled.4
League and the Washington Redskins. Pro-Football appealed to the District
The board held that the marks Court for the District of Columbia.
were disparaging to a substantial
composite of Native Americans as On a motion for summary judgment,
of the registration date of each mark, the district court reversed the cancel-
in violation of Section 2(a) of the lation, stating that the Board’s finding
Lanham Act, which prohibits regis- of disparagement was not supported
tration of a mark that “may disparage” by substantial evidence and that the
persons or “bring them into contempt doctrine of laches precluded consid-
or disrepute.”2 As a result, the board eration of the case.5 The petitioners
ordered the cancellation of six appealed to the Court of Appeals
Redskins trademark registrations for the District of Columbia Circuit,
owned by Pro-Football Inc., the which ruled that the lower court
parent company of the Washington had applied the wrong standard in
Redskins, issued between 1967 evaluating the laches defense as to
and 1990. one of the petitioners.6
Pillsbury Winthrop Shaw Pittman LLP www.pillsburylaw.comIntellectual Property
On remand, the district court held those of the identified group, not Native Americans inherent in its
that the claim still was barred by necessarily the views of the American original definition.
laches (even with application of the public as a whole. Moreover, both
correct laches standard)7, and the questions must be answered as of the With regard to the second part of
D.C. Circuit affirmed.8 Thus, Harjo registration date of the mark. Thus, the test, the board found that the
was resolved solely on the procedural in both Harjo and Blackhorse, the evidence supported a determina-
issue of laches and the D.C. Circuit board was charged with determining, tion that the term “redskins” was
never evaluated the board’s ruling as of 1967, 1974, 1978 and 1990 (the disparaging to a substantial composite
that the Redskins marks were registration dates of the marks at of Native Americans during the
disparaging when registered or the issue), the meaning of the term relevant time period of 1967-1990.
district court’s reversal of the original “redskins” as used in Pro-Football’s The most probative evidence for the
finding on the merits. marks and in connection with board fell into two categories: (1) a
professional football-related services, general analysis of the word drawn
Test for Disparagement and whether such meaning was primarily from dictionary definitions
The Blackhorse proceeding was disparaging to a substantial composite and media references, and (2) the
filed in 2006 by six different Native of Native Americans. specific views of various Native
Americans, two of whom had very Americans themselves.
recently turned 18 (the date from Evidentiary Record
which laches begins to run). Given The parties to the Blackhorse In particular, the record included
these petitioners’ minimal delay in proceeding stipulated that nearly excerpts from multiple dictionaries
filing the cancellation, as well as the the entire Harjo record be submitted whose definition of “redskin”
broader public policy interest at stake into evidence through a notice of included a restrictive usage label
in the case, the board in Blackhorse reliance, reserving the right to object identifying the term as “often
dispensed with Pro-Football’s to such evidence solely on the basis of offensive” and expert testimony from
laches argument in relatively short relevance. All other possible admis- both sides that the adoption of usage
order, focusing its opinion almost sibility objections, including hearsay, labels by dictionary editors usually
entirely on the threshold question were waived. As a result, in the reflects the influence of sociopolitical
of disparagement. Blackhorse proceeding, the content pressure groups. The board found
of the admitted Harjo evidence could that the dictionary evidence showed
Determining whether a mark is be considered for the truth of the a clear trend, beginning in 1966 and
disparaging under Section 2(a) matters asserted, a potentially critical continuing to 1990, to label the term
of the Lanham Act, involves a distinction with regard to some “redskin” as “offensive.”
two-step inquiry: evidence found to be hearsay or to
lack foundation in Harjo. The record further showed a simulta-
1. What is the meaning of the neous and marked decrease in media
particular term, as it appears As to the first part of the disparage- usage of the term “redskin” to refer
in the mark and as that mark ment test, the board in Blackhorse to Native Americans, with evidence
is used in connection with the held that the evidence overwhelming of widespread usage of the term prior
goods and services identified in supported a determination that the to the late 1960s but very little usage
the registration? term “redskins,” as it appears in of the term in this context after 1970.
Pro-Football’s various marks, means In the board’s view, this evidence
2. Is such meaning one that is
“Native Americans.” Although the clearly demonstrated that during the
disparaging to a substantial
term also refers to the Washington relevant period of 1966-1990 there
composite (which is not necessarily
Redskins football team, even when was increasing public recognition that
a majority) of the group identified
used in the context of Pro-Football’s the term “redskin” was offensive and
by the particular term?
marks and in connection with disparaging to Native Americans.
In deciding the second part of the football-related services, the
test, the most relevant views are term still carries the allusion to With respect to firsthand views
Pillsbury Winthrop Shaw Pittman LLPRedskins Ruling is Consistent with TTAB Precedent
of Native Americans, the record from 1972 about the meeting, Dissent
contained a 1993 resolution adopted the topics discussed, and the In his dissent, Judge Marc Bergsman
by the National Congress of American views asserted by the Native argued strenuously that the evidence
Indians (“NCAI”), a nationwide American attendees. of record did not support the
intertribal organization founded majority’s findings, specifically “that
in 1944, stating that “the term Finally, the record included numerous the dictionary evidence relied upon by
REDSKINS is not and has never been letters from individual Native the majority is inconclusive and there
one of honor and respect, but instead Americans protesting Pro-Football’s is no reliable evidence to corroborate
has always been and continues to be use of the Redskins name as offensive. the membership of the National
a pejorative, derogatory, denigrating, Again, many of such letters were Council of American Indians.” He
offensive, scandalous, contemptuous, written at the end of, or just after, the chastised the petitioners for simply
disreputable, disparaging and racist relevant time period however, the reusing the Harjo trial record without
designation” for Native Americans. board found them to be persuasive substantial augmentation (a record
Deposition testimony from NCAI’s evidence of the writers’ viewpoints that he characterized as stale and
executive director in 1996 indicated during the relevant time period. nothing more than a “database dump”
that membership at the time of the with “no order or structure ... that
1993 resolution was approximately Majority Decision told a compelling story or presented
150 tribes, or roughly 30 percent of The board concluded that the a coherent case”) and criticized the
Native Americans. evidence of record in Blackhorse majority for basing its conclusions on
established that, at the times of such insufficient evidence.
The board found the NCAI resolution the various registrations, the term
to be a credible and reliable “redskins” was an ethnic term In particular, Judge Bergsman argued
document representing the views meaning “Native Americans” that was that evidence of just two dictionary
of a substantial composite of Native disparaging to at least 30 percent of entries from the late 1960s and early
Americans. While the resolution was Native Americans (the approximate 1970s labeling the term “redskin”
adopted three years after the relevant membership of the NCAI), which as “often offensive” leaves open the
timeframe, the board found it to be percentage is a “substantial possibility that the term is not “always
persuasive evidence of the views of composite” of that group. offensive” and may not be offensive
Native Americans during the relevant when used in connection with the
timeframe, given the particular In the majority opinion, name of a football team. With regard
language of the resolution setting Administrative Trademark Judge to the 1972 meeting between Native
forth the past and ongoing viewpoints Karen Kuhlke noted that neither American representatives and Edward
of the membership of NCAI. Pro-Football’s alleged honorable Bennett Williams, Judge Bergsman
intent with regard to use of the argued that newspapers articles and
The record also included evidence term “redskins” nor the generally the deposition testimony of only one
of a 1972 meeting between Edward inoffensive nature of football-related meeting attendee were insufficient
Bennett Williams, then president services precluded these findings. evidence as to what transpired
and part-owner of the Washington Moreover, she noted that although at the meeting, the particular
Redskins football team, and a a portion of the American public organizations participating in the
delegation of seven representatives (and even some portion of Native meeting, or the people represented by
from various Native American organ- Americans) may not have found the those organizations.
izations (including NCAI), at which term “redskins” to be disparaging
meeting the representatives voiced in the context of football during the Finally, he argued the evidence of
their objections to the Redskins team relevant time period, those differing record did not adequately substan-
name as disparaging. In addition to opinions do not erase the perceptions tiate the membership of NCAI at
deposition testimony from at least of the substantial composite of Native the relevant time periods or the
one meeting attendee, the record Americans who did find the term to organization’s authority to take, on
contained various news articles be disparaging. behalf of its members, the position
www.pillsburylaw.comIntellectual Property
on the disparaging nature of the Heeb Media, who also publishes a evidence is clear that, at a
term “redskins” set forth in the magazine directed to the Jewish minimum, among the older
1993 NCAI resolution. According community under the title “Heeb,” generation of Jews the term
to Judge Bergsman, the evidence contended that a finding of dispar- retains its negative meaning.
supporting the majority’s finding that agement should not be based on The post-college age Jewish
NCAI represented approximately “isolated editorial comments made population must be considered
30 percent of Native Americans by members of one organization or a substantial composite for
during the relevant time period “is one vocal individual whose opinions purposes of our analysis.
a house of cards that collapses do not represent Jewish popular
upon examination.” thought or the cultural mainstream.” Similarly, in In re Pamela Geller
In particular, the applicant submitted decided early last year in a nonprece-
Accord With Board Decisions in a 2005 dictionary excerpt that dential opinion, the board inferred the
Heeb and Geller defined the term as “Jewish” with no opinion of a substantial composite of
While the majority ruling in restrictive usage label, and statements the referenced group by extrapolating
Blackhorse may have taken some from various Jewish organizations the stated opinion of a few group
people by surprise, the decision is and individuals who did not find the representatives as to the disparaging
squarely in line with two other recent term offensive. nature of the mark. In that case,
TTAB decisions, In Re Heeb Media applicants Pamela Geller and Robert
LLC[9] and In Re Pamela Geller and Despite the conflicting evidence, Spencer sought to register the mark
Robert B. Spencer,10 issued quietly the three-judge panel unanimously “Stop the Islamisation of America”
with little media coverage or public affirmed the refusal in a precedential in connection with “providing
fanfare, in which the board found opinion written by Judge Kuhlke. The information regarding understanding
the marks at issue to be disparaging board found the dictionary definitions and preventing terrorism.”
under Section 2(a) of the Lanham Act. to be persuasive evidence of the
Although these cases each involved term’s derogatory meaning (despite The examining attorney introduced
the ex parte appeal of an examining being not entirely unanimous in dictionary definitions indicating
attorney’s refusal to register the mark, their inclusion of a restrictive usage that the term “Islamisation” means
they nevertheless are instructive of label), and while the record reflected “converting or conforming to Islam”
the quantum of evidence the board disparate views within the Jewish and argued that the overall mark
has deemed sufficient to show that a community as to whether the term would be understood to mean that
term is disparaging to a substantial was disparaging, the board found action must be taken to cease the
composite of the identified group. clear evidence that a substantial conversion of Americans to Islam.
composite of Jewish people held When viewed in the context of
In re Heeb Media concerned an such view. applicant’s services, the examining
application to register the mark attorney argued the mark conveys the
“Heeb” for clothing. In her refusal to The examining attorney has further message that such action is
register the mark on the basis that presented evidence from necessary to prevent terrorism.
it was disparaging to a substantial various segments of the Jewish
composite of Jewish people, the community, including the Applicants argued that the term
examining attorney presented Anti-Defamation League, a “Islamisation” has a much narrower
several dictionary definitions university professor, rabbis, a meaning — relating only to
defining “Heeb” as a derogatory talk-show host and ordinary conformity with Islamic law — and
term for a Jewish person, and various citizens. Although perhaps therefore the mark refers only to
news articles reporting that people among many of the college-age halting the “sectarianization of a
representing Jewish groups or population to whom applicant’s political society through efforts
speaking in their individual capacity magazine is directed the word to make it subject to Islamic law.”
as Jews considered the term to HEEB may not have the same Although applicants cited several
be disparaging. derogatory connotation, the uses of the term in this context by
Pillsbury Winthrop Shaw Pittman LLPRedskins Ruling is Consistent with TTAB Precedent
academic, political and legal experts, Extra Scrutiny in Blackhorse alone the opinion of a substantial
the board agreed with the examining The majority ruling in Blackhorse composite of Native Americans.
attorney that the dictionary appears consistent with these recent
definitions were more reflective of board decisions. The second prong Although the majority opinion
the current understanding of the term of the test for disparagement under details, at great length, the evidence
and that many people would view Section 2(a) of the Lanham Act may supporting its determination that,
the mark to mean that the spread of be satisfied with a rather modest at a minimum, the membership of
Islam in America is undesirable and evidentiary showing. In both Heeb the NCAI (roughly 30 percent of
should be stopped in order to avoid or and Geller, the board inferred the Native Americans) found the term
reduce terrorism. opinion of a substantial composite of “redskins” to be disparaging on the
the identified group by extrapolating relevant dates and that such group
The board then turned to the second the stated opinion of a few group represented a “substantial composite”
inquiry of the disparagement test representatives without seriously of Native Americans, the dissent
to determine whether the mark scrutinizing the representative characterizes the majority’s analysis
is disparaging to a substantial capacity of those individuals or as mere “gyrations.”
composite of American Muslims. The requiring a strict mathematical
board noted that the mark creates a calculation of the number of persons To show that a substantial composite
direct association between Muslims on whose behalf they purportedly of Native Americans held a particular
and terrorism, and concluded were speaking. opinion in 1967, it could be argued
that “the majority of Muslims are that Judge Bergsman requires a near
not terrorists and are offended by For example, the board in Heeb person-by-person poll of Native
being associated as such” on the relied on a quote from Ken Jacobson, Americans living at that time: “It is
basis of various newspaper articles the associate national director of astounding that the petitioners did
quoting the express opinion of the Anti-Defamation League, that not submit any evidence regarding
Muslims speaking in their individual the term “Heeb” “is offensive to the Native American population
capacities or reporting that such many Jews” without questioning the during the relevant time frame, nor
opinion is held by “a record number” authority of the ADL or Jacobson did they introduce any evidence
of American Muslims. The board to speak for Jews or requiring any or argument as to what comprises
therefore concluded that the mark evidence that “many Jews” is a a substantial composite of that
“Stop the Islamisation of America” is substantial composite of the group. population thereby leaving it to the
disparaging to a substantial composite Similarly, the board in Geller relied majority to make the petitioners’ case
of American Muslims. on a quote from Maajid Nawaz, have some semblance of meaning.”
director of the Quilliam Foundation, a
The U.S. Court of Appeals for the counter-extremism think tank based There likely are several circumstances
Federal Circuit agreed, and issued in the U.K., that “the majority of that underlie the heightened scrutiny
an order this spring affirming Muslims are not Islamists,” without of the evidence in Blackhorse.
the board’s refusal to register the requiring further evidence as to Undoubtedly, the inter partes nature
mark.11 The appellate court referred Nawaz’s authority to speak for any of the proceeding was a factor.
to the board’s listing of “multiple Muslims, much less a majority thereof. The Blackhorse petitioners were
sources where Muslims stated they required to prove their claim by a
were concerned by ... ‘anti-Muslim Yet this is the type of evidentiary preponderance of the evidence, while
sentiment that automatically foundation the Blackhorse dissent a lower standard of proof is required
associates Islam with terrorism’ ” appears to require as a prerequisite in ex parte cases, such as Heeb and
and concluded that the board’s to finding that any statement made by Geller. The examining attorneys in
finding that the mark is disparaging the National Congress of American those cases had only to put forth
to a substantial composite of Indians or an NCAI representative “substantial evidence” or “more than
American Muslims was supported by was, in fact, the opinion of anyone a scintilla of evidence” in support of
substantial evidence. other than the individual speaker, let their prima facie case.
www.pillsburylaw.comIntellectual Property Redskins Ruling is Consistent with TTAB Precedent In addition, the politicized and the trademarks in the involved Washington Redskins owner Dan high-profile nature of the topic likely registration to be changed or no Snyder, that the team name honors played a role. The PTO anticipated longer be used by Washington, D.C.’s and celebrates Native Americans that the Blackhorse decision would pro football team.” rather than demeans them. Of course, bring intense scrutiny and public the opinions of the team’s owner — comment and therefore issued, Finally, however, the Blackhorse now and when the “Redskins” regis- simultaneously with the announce- decision and the surrounding trations were issued — are irrelevant ment of the decision, a list of media firestorm seem to betray the lingering to the legal analysis in Blackhorse. talking points and an “Official USPTO existence of the concept of the “noble Nevertheless they seem to reflect the Statement” clarifying that the savage” in American culture — the persistent belief of some that there decision relates only to Pro-Football’s romantically idealized portrayal remains a place in American popular right to maintain its federal registra- of Native Americans that may fuel culture for a term which many Native tions and “does not, however, require the opinion of some, including Americans consider a racial epithet. Endnotes 1 Cancellation No. 92046185 (June 18, 2014). 2 15 U.S.C. § 1052(a). 3 Cancellation No. 92021069. 4 Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d 1705 (T.T.A.B. 1999). 5 Pro-Football Inc. v. Harjo, 284 F.Supp.2d 96; 68 U.S.P.Q.2d 1225 (D.D.C. 2003). 6 Pro-Football Inc. v. Harjo, 415 F.3d 44; 75 U.S.P.Q.2d 1525 (D.C. Cir. 2005). 7 Pro-Football Inc. v. Harjo, 567 F.Supp.2d 46; 87 U.S.P.Q.2d 1891 (D.D.C. 2008). 8 Pro-Football Inc. v. Harjo, 565 F.3d 880; 90 U.S.P.Q.2d 1593 (D.C. Cir. 2009). 9 89 U.S.P.Q.2d 1071 (T.T.A.B. 2008). 10 Serial No. 77940879 (February 7, 2013) (not precedential). 11 In re Geller, 751 F.3d 1355; 110 U.S.P.Q.2d 1867 (C.A Fed. 2014). The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice. Pillsbury Winthrop Shaw Pittman LLP | 1540 Broadway | New York, NY 10036 | +1.877.323.4171 ATTORNEY ADVERTISING. Results depend on a number of factors unique to each matter. Prior results do not guarantee a similar outcome. © 2014 Pillsbury Winthrop Shaw Pittman LLP. All rights reserved. Pillsbury Winthrop Shaw Pittman LLP www.pillsburylaw.com
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