What the Media Isn’t Telling You About the Redskins Lawsuit

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November 13, 2014
Kaylea Weiler
SmithAmundsen Intellectual Property Alert

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On October 31, 2014, Judge Gerald Bruce Lee of the Eastern District of Virginia allowed a complaint filed by the Washington Redskins against the Native American individuals who successfully petitioned to cancel six Redskins trademarks. While the media and a significant number of supporters of Native Americans have expressed outrage at the decision, it is clearly aligned with U.S. law.

When a party is unhappy with a TTAB ruling, it has two options of where to bring a challenge to such a ruling. It can directly appeal the decision to the United States Court of Appeals for the Federal Circuit. Created by an act of Congress, the Federal Circuit specifically has jurisdiction to hear cases whose subject matter involves patent and trademark issues, and can hear appeals of decisions rendered by the TTAB and other Administrative Agencies. The other option is to file a civil action in any other U.S. court having jurisdiction. See 15 U.S.C. A. § 1701(b)(1).

Here, the Redskins wisely chose the latter option, filing its Complaint in the US District Court for the Eastern District of Virginia, in the Fourth Judicial Circuit. This choice of venue will be important moving forward as the Fourth Circuit has recently held that TTAB challenges before it are reviewed de novo. Therefore, the court need not give deference to the TTAB’s reasoning in cancelling the marks. See Swatch AG v. Beehive Wholesale, LLC, 739 F. 3d 150 (Oct. 2013).

The Redskins complaint alleges that there was not enough evidence to support the TTAB’s finding that the marks are disparaging. It points out that the relevant inquiry is whether the marks were disparaging to a “substantial composite” of Native Americans at the time the marks were registered. The team’s complaint quotes the dissenting opinion from the TTAB decision in noting, “…petitioners did not submit any evidence or argument as to what comprises a substantial composite of that population…” It also references the 2003 Harjo decision, which found that there was not sufficient evidence to support a conclusion that the marks were disparaging at the relevant times.

Because the complaint challenges the evidence presented by the Native American individuals who brought the cancellation action, these individuals are necessary parties to the action. In fact, Judge Lee indicated that dismissing action against them at this stage of the litigation would be unprecedented.

The media has not been shy in its criticism of the football team and its owner for refusing to change the team name. However, because the court will review the case de novo and examine whether the marks were disparaging at the time of registration, the court of current public opinion will play little, if any, role in whether the Eastern District of Virginia will uphold the TTAB’s decision to cancel the marks.