In Danger of Losing, Redskins Fight for Trademark

April 12, 2013

Friday, April 12, 2013, by Michael Frongello
On March 20, lawmakers in the United States House of Representatives introduced a bill that would revoke the trademarks of the NFL’s Washington Redskins franchise. The bill, codified as H.R. 1278, and titled “the Non-Disparagement of American Indians in Trademark Registrations Act of 2013”, cancels all existing “Redskins” trademarks and prohibits future registrations.
The introduction of this bill comes roughly two weeks after the Trademark Trial and Appeal Board for the U.S. Patent and Trademark Office (TTAB), a special three-judge panel, heard arguments over whether the Washington Redskins should be allowed to retain trademark protection for their franchise’s name. Suzan Shown Harjo, president of the advocacy group Morning Star Institute, organized the case on behalf of young Native Americans. Harjo, who is a descendent of the Cheyenne and Muscogee tribes, says the word Redskin is “the worst thing we can be called in the English language… [a reminder of the] days we were skinned and the days we were scalped.” On the other side, the Washington Redskins franchise has maintained that the term “Redskin” is not meant to insulting or offensive.

On March 20, lawmakers in the United States House of Representatives introduced a bill that would revoke the trademarks of the NFL’s Washington Redskins franchise. The bill, codified as H.R. 1278, and titled “the Non-Disparagement of American Indians in Trademark Registrations Act of 2013”, cancels all existing “Redskins” trademarks and prohibits future registrations.

This is not the first time that Harjo had led such a case. In 1992, Harjo led seven Native Americans in petitioning the TTAB to cancel trademark registrations owned by the Washington Redskins “on the grounds that the trademarks at issue were scandalous and immoral, and accordingly, should not be permitted to be registered.”  Federal Rules, including the Trademark Act of 1946 (which prohibits the registration of trademarks that are immoral, scandalous, or generally offensive to a relevant segment of the population), generally disallow trademarks which disparage ethnic groups. In fact, the TTA granted Harjo’s petition and cancelled the Redskins’ trademarks, finding that the term was a racial slur and offensive to Native Americans.  However, the TTAB’s 1992 decision was overturned on appeal by the United States District Court for the District of Columbia for two reasons: (1) The TTAB lacked substantial evidence to find disparagement; (2) The petition was barred by laches, which prohibits a party from waiting so long to file a claim that it becomes unfair to the other party (which is why it’s important that the current petition is being brought by five “young” Native Americans).  Many appeals followed, but to no avail. It is unclear when the TTAB will make a decision on the case (and they may not need to if the new bill is passed), but most believe it could be months before a decision is announced.
If Harjo’s petition is successful, it would result in the cancellation of the Redskins federal trademark registration, but he Redskins would still have nationwide common law rights. However, attorneys like James McCarthy, a partner at the intellectual property law firm McDonnell Boehnen Hulbert & Berghoff, think that the recent House bill may prove to be more problematic for the Redskins as “the new legislation would cancel the current trademark registrations without the need for costly litigation and uncertain result.”  Yet McCarthy also notes that “even if the Redskins trademark registrations are cancelled, they still have very valuable, nationwide common law rights based on the extensive and continuous use of the mark. These rights are exclusive and enforceable. In addition to the basic trademark rights, the team has a First Amendment right to ‘commercial speech’ that probably protects its ability to use the term REDSKINS, even if the trademark registration is lost.” Thus, while the team continues to fight for its trademark, it appears that the cancellation of the trademark would not be completely devastating for the franchise.
The Redskins are not the only team facing this issue as “two-thirds of team names with Native references have been changed since 1970, with less than 1,000 remaining,” so this case and legislation has the potential to affect teams beyond the Redskins, and thus it will be interesting to follow the result of the case and the bill proposal.