Think About Whom You May Be Offending Before Choosing Your Mark: A Lesson From The Washington Redskins Trademark Cancellation

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June 20, 2014
Kaylea Weiler
SmithAmundsen Intellectual Property Alert

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This week, upon petition by five Native American individuals, the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (TTAB) cancelled six “Redskin” trademarks that had been registered to the Washington D.C. based NFL team between 1967 and 1990. Section 2(a) of the Lanham Trademark Act allows the USPTO to refuse registration for marks which “disparage persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt or disrepute.” Most trademark challenges must be brought within five years of registration, but challenges under this section may be brought “at any time."

Interestingly, the TTAB said the relevant inquiry is not whether the term is disparaging in the eyes of the American public as a whole, but whether the referenced group would find the term to be disparaging at the time the trademarks were registered (between 1967 and 1990). The TTAB evaluated extensive historical evidence (newspaper articles, television programs, letters of protest, dictionaries) from the relevant time periods, and determined that Native Americans found the term “redskin” to be disparaging. Because the trademark owner’s intent in choosing the mark is irrelevant, the TTAB disregarded evidence that the original owner of the team (then the Boston Redskins), chose the name “Redskins” in the 1930’s to honor the team’s Native American head coach, William “Lone Star” Dietz.

Since the USPTO cancellation decision came down a few days ago, the owner of the Washington Redskins has made it clear that the organization intends to continue using the trademarks. The Washington Redskins have filed an appeal and the TTAB has suspended its decision pending appeal. So, at this particular point in time, the fate of the “Redskins” trademark remains a “coin toss.”