The name was never a label. It was, and continues to be, a badge of honor. – Daniel Snyder
Merrit Meets the Enemy. Victory over our Frontier Foes. Thirty-Seven Redskins Sent to the Happy Hunting Grounds. The Indian Problem Reaching a Conclusion. – Rocky Mountain News, October 8, 1879
Since the 1960s, Native American activists have pushed for schools, colleges and sports teams to end the use of Indian-themed names and mascots, which they consider offensive and demeaning. Two-thirds of these schools have dropped these names, mostly voluntarily and without incident. Professional sports teams, reaping billions of dollars in revenue, however, have been far more resistant to change, even as the tide of public opinion turns increasingly against use of such names and mascots. The name of Washington’s football team, the “Redskins,” has come under particular scrutiny recently. In response to this pressure, Dan Snyder, owner of the team, declared, “We’ll never change the name. It’s that simple. NEVER – you can use caps.”
Although the team’s management has vowed to resist public pressure to end its use of the name and Native American imagery, a recent decision by the Trademark Trial and Appeal Board (TTAB) to cancel the team’s registrations may make protecting the team’s interest in the name and associated imagery more difficult. The TTAB is an administrative body within the United States Patent and Trademark Office responsible for adjudicating certain kinds of cases involving trademarks, including those in opposition to trademark registrations filed under Sections 2(a) and 14(3) of the Lanham Act.
Section 2(a) of the Lanham Act prohibits the registration of a mark that “[c]onsists 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.” Section 2(a), however, only applies to registration applications. A challenge to an already registered mark must take place under Section 14(3) of the Lanham Act, which provides that a petitioner may seek cancellation of a registration that the petitioner believes was registered in violation of Section 2(a). To prevail in such action, a petitioner must demonstrate that a “substantial composite” of the relevant population considered the term to be disparaging at the time of registration.
This is the second time that the TTAB has heard a challenge to the Redskins trademarks under the Lanham Act. In Harjo v. Pro Football, Inc., decided in 1999, the Board held that the Redskins trademarks were disparaging to Native Americans at the time of their registration and cancelled the registrations. On appeal, the United States District Court for the District of Columbia reversed the cancellations, finding that the petitioners did not carry their burden of showing that the marks were disparaging at the time of registration. The court also rejected the action as barred by the equitable doctrine of laches, by which the petitioners’ failure to assert their rights in a timely matter caused the claim to be barred. The matter was ultimately resolved by the D.C. Circuit solely on the grounds of laches, providing the Native American activists another opportunity to attack the marks before the TTAB, provided they could find younger plaintiffs, who unarguably had not waived their rights.
Undeterred, a new group of petitioners, led by then-eighteen-year-old Amanda Blackhorse filed suit. On June 18, the TTAB ruled 2-1 in Blackhorse v. Pro-Football, Inc. that the trademark registrations of the Redskins “must be cancelled because they were disparaging to Native Americans at the respective times they were registered, in violation of Section 2(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a).” In the opinion, Administrative Judge Marc A. Bergsman was careful to note that the case did not concern the current controversy over whether the term “redskins” was disparaging to Native Americans today, rather, the relevant standard required asking whether the evidence in the record established that the term “redskins” was disparaging to a substantial composite of Native Americans at the time each of the challenged registrations were issued.
The TTAB examined two different categories of evidence dating to the relevant time period: the first focusing on the “general analysis of the word,” and the second on the specific views of Native Americans during the period during which the marks were registered. For the first category, the Board was informed heavily by dictionary definitions that indicated the term “redskins” was offensive, disparaging and contemptuous. The TTAB found that form 1859 to 1965, no dictionary included such reference, but beginning in 1966, the term began to be labeled offensive with increasing regularity, until it was universally considered offensive, all during the relevant time period. The Board also considered expert testimony, news articles and reference books and found they supported its conclusion that the term was generally considered to be disparaging during the relevant time period.
In examining the specific views of Native Americans, the Board primarily looked to the passage of a 1993 resolution by the National Congress of American Indians, which stated that the term was historically disparaging. Since the NCAI represented thirty percent of the Native American population at that time, its resolution was “clearly probative on the views of Native Americans held at the referenced time period.” The TTAB also cited to deposition testimony, letters of protest and other efforts by Native Americans from the 1960s onward to have the name “Redskins” abandoned.
Taking all the evidence together, the TTAB found that, at a minimum, approximately thirty percent of Native Americans – considered to be a substantial composite – found the term “redskins” used in connection with the football team to be disparaging during the relevant time period. Having found this burden met, the Board rejected as immaterial evidence suggesting that some Native Americans did not find the term offensive: “once a substantial composite has been found, the mere existence of differing opinions cannot change the conclusion.”
The TTAB also rejected the invocation of the laches doctrine. The Board found difficult justifying balancing any economic harm to the team against human dignity, noting that courts “routinely held that where there is a broader public policy concern at issue, the equitable defense of laches does not apply.”
What then is the practical effect of the cancellation of the Redskins’ trademarks? At the present moment, nothing. Decisions of the TTAB may be appealed to a United States district court or to the United States District Court of Appeals for the Federal Circuit. The team has appealed the decision in the United States District Court for the Eastern District of Virginia, arguing that the Board’s decision should be reversed and raising further constitutional claims that the TTAB is not empowered to adjudicate. The registrations of the team’s marks remain enforceable until judicial review is completed.
The decision, if upheld, does not technically affect the team’s right to use the “Redskins” name or other marks at issue. TTAB determines only whether a mark can be registered with the federal government, but lacks the statutory authority to prevent its use. Only courts have the power to enjoin use of a trademark. If affirmed, however, Pro Football will lose the substantial legal benefits conferred by federal registration. The primary benefits attaching from registration are the creation of legal presumptions of ownership and nationwide scope of rights in the marks, the ability to use the federal registration symbol (®) and the ability to record registrations with Customs and Border Patrol, empowering them to block incoming counterfeit products. Losing these protections will limit the ability of the Redskins to stop unauthorized third party use of its marks. Although it may rely on other provisions for relief (such as a claim for dilution of the marks), registration affords the ability to seek statutory damages against counterfeiters, which may be up to $2 million per counterfeited mark. So while an ultimate victory for the Blackhorse petitioners won’t foreclose use of the “Redskins” name and associated imagery, it will hit the team where it hurts – in the wallet.
It is unclear how the TTAB’s decision will fare on appeal, as its earlier ruling cancelling the trademarks in Harjo was reversed. The TTAB seems to have taken lessons from the reversal to heart: the opinion methodically cites to evidence in the record supporting its conclusion of that a substantial composite of Native Americans found the term disparaging at the time of registration. The dissent, however, argues that the petitioners’ reliance on the same evidentiary record as Harjo must be fatal, as that evidence was found insufficient on appeal. The team’s choice for appellate review may influence the outcome: an appeal before the Federal Circuit would use only the existing record, while in district court, both parties will be allowed to introduce new evidence. Regardless of the outcome, the conversation started in the 1960s regarding the appropriation of Native names and images for schools and sports will continue. As Seattle Seahawks linebacker and Super Bowl MVP Malcolm Smith tweeted, “There is no room for bigotry in American sports. It takes courage to change the culture.”
Kelsey Nussenfeld is a J.D. candidate, ’16, at the NYU School of Law.
The name was never a label. It was, and continues to be, a badge of honor. – Daniel Snyder