The team name of the Washington NFL club is a badge of honor meant to exalt American Indians, according to the team. The name is a damnable racial slur that disparages American Indians, according to 50 U.S. Senators who wrote scathing letters to NFL Commissioner Roger Goodell last week.
Letters amount to moral suasion. The next big thing in a long-running controversy over the team name might well be more than that. Both sides await a ruling from the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office in Blackhorse v. Pro-Football Inc. The Washington team name enjoys the benefits of federal trademark protection; petitioners in this case seek to have the team's trademark registrations canceled on disparagement grounds.
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If the team were applying for federal trademark protection for its "Redskins" name today, it would almost certainly be denied: At least 12 times since 1992 the USPTO has refused to register such marks on disparagement grounds, including seven applications from the Washington team (for terms such as "Redskins Fanatics" and "Redskins Rooters") and one from NFL Properties (for "Boston Redskins").
But those were for new trademark registrations. The question in this case is whether the term was disparaging to "a substantial composite" of American Indians when the Washington team's six federal trademark registrations were granted between 1967 and 1990. A time machine might come in handy for determining that.
The petitioners, five American Indians including Navajo activist Amanda Blackhorse, argue that the name was, and is, disparaging. The football team, legally known as Pro-Football Inc., argues that it was not and is not. The arguments haven't changed much in the more than two decades since an original version of this case, Harjo v. Pro-Football Inc., was filed by seven American Indians including lead petitioner Suzan Shown Harjo. The trademark board's decision in Harjo took about a year; the board heard Blackhorse more than 14 months ago.
The ruling, whenever it comes, may not be the final word — appeals could lengthen by years a case with roots dating to 1992. But because the team name of the Washington club has emerged as a hot-button issue in the past 18 months — castigated at a Smithsonian symposium, criticized by President Obama, lampooned in late-night monologues, denigrated by half of the U.S. Senate — whatever the board decides will be headline news.
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National media coverage was muted when the board canceled the trademark registrations in 1999. (That ruling in Harjo was overturned on appeal in 2003 largely on technical grounds.) This time, news of canceled marks would very likely snowball on social media.
The practical effect of cancellations would be small on one level because the team could continue to use the marks as it pleases, even if it loses on appeal. On another level the effect would be large because federally registered trademarks keep others from selling items with the team's logos, although even then the team could try to keep unauthorized merchandisers from using the marks through common law and state statues.
Perhaps most significantly, if the trademark registrations are canceled, is that it would serve as the latest clarion call in a rising tide of pressure on the team and the league.
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USA TODAY Sports is looking at the case now to try to simplify the complexities of a long-running legal dispute that is often misunderstood. Trademark law experts Christine Haight Farley, who teaches at American University's Washington College of Law, and Manny D. Pokotilow, an attorney with the Philadelphia firm of Caesar, Rivise, Bernstein, Cohen & Pokotilow, offered their insights. Farley favors the petitioners' position and Pokotilow favors the team's.
What is the Lanham Act?
The year 1946 was not a good one for Washington's NFL club. The team finished 5-5-1 — and Congress passed the Lanham Act. Its Section 2(a) bars registration of trademarks that disparage a group or bring it into contempt or disrepute. "This is a good law," Farley says. "There are certain words that should not have federal trademark protection."
What are some other examples of trademark applications that have been refused on disparagement grounds?
Examining attorneys denied a mark for "Stop the Islamization of America" and a federal court ruled on appeal this month that the proposed mark was likely to be understood as disparaging by a substantial composite of Muslims. A dance rock band called The Slants applied for trademark protection and was denied when examining attorneys determined the term is disparaging to a substantial number of Asian Americans; the Asian American band with a large Asian American fan base is appealing. The trademark board denied registration for "Heeb" because the term retains a derogatory meaning even if, as the publisher of a magazine with that name argued, it "is a source of pride to many young, progressive Jews." An Armenian wine called "Khoran" was refused trademark registration because the word is "the phonetic equivalent of 'Koran' " — the sacred text of Islam that forbids consumption of alcohol — and would therefore be disparaging to the beliefs of Muslims even though in Armenian the word means "altar." Nothing stops these entities from using their names as they choose but they do not get all the benefits of federal trademark protection.
How is Blackhorse different from those cases?
Usually questions of disparagement are argued at the application stage. Blackhorse is highly unusual because the trademark registrations at issue were granted so long ago and the name is so well established as the brand of one of the flagship franchises of the nation's most popular sports league.
Could the team get federal trademark protection for the term if it were applying for the first time today?
Almost certainly not. Examining attorneys of the USPTO have refused to register such trademarks on disparagement grounds at least a dozen times since 1992, including "Redskins Hog Rinds" and "Washington Redskins Potatoes" since December; the team was not the applicant in those cases. The letter from an examining attorney in the hog rinds application said: "Registration is refused because the applied-for mark REDSKINS HOG RINDS consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs, or national symbols."
Farley says it cannot be said with absolute certainty that a mark with that term could not be registered today because context of use can be different in different cases. But, she adds, "I can say it is extraordinarily unlikely to pass today."
If the board finds the term disparaging in those cases, shouldn't that mean the existing marks should be canceled too?
Not necessarily. The standard in this case is whether the term was disparaging to a substantial composite of American Indians when the six marks were granted between 1967 and 1990. The petitioners argue that dictionary meanings in those times often listed the word as offensive, that the National Congress of American Indians was on record against the term throughout the time period and that evidence in literature, movies and news articles of the time show the term used in disparaging ways.
Team attorneys argue that the term is not disparaging and that anyway it has acquired a secondary denotation in the context of pro football. They say that today, as at the times of registration, when "used solely to designate" the Washington team that the term "is a distinct word, entirely separate from … the core ethnic meaning" of the original term and that it has been used for decades in newspapers to refer to the team, not American Indians.
How does the trademark board determine disparagement?
There is a two-prong test. The first test considers use of a proposed mark in the context of its commercial use. The second considers if the word or phrase refers to identifiable persons and whether the meaning may be disparaging to a substantial composite of the referenced group.
Pokotilow, an attorney who is not involved in the case, believes the Washington team has a good argument.
"I don't think anyone thinks 'Redskins' means to the average person anything other than the Washington football team," he says. "I don't think anyone really thinks anyone is being disparaged by it except this small group of Native Americans. My belief is you just have to weigh all the values here. The team has spent millions promoting the name over more than 75 years. Is it fair to ask them to give up the goodwill value of a capital asset that is worth $100 million at the very minimum, probably closer to whatever the value of the team is? If it were something that was truly disparaging, why wouldn't all Native Americans feel that way? I don't believe it is."
Farley, who wrote an amicus brief for the petitioners at the Supreme Court level in Harjo, says the team can argue "that people don't recognize the racial meaning of the word, they just recognize it as the team." The trouble with that argument, as she sees it, is that the team's logo and imagery is clearly associated with American Indians. "It's hard to take that out of the context," she says. "The context is ever present."
What does "substantial composite" mean? Is that 10% of a referenced group, say, or 30%?
That's not entirely clear, though it doesn't mean a majority. Pokotilow thinks it means at least 10%, which he says is the base number for likelihood-of-confusion cases in trademark disputes. Farley, who calls the Washington team PFI for its legal name, says: "I think the effort by PFI to round up Native Americans who support the word is wasted because it doesn't undercut the argument that nevertheless there are a substantial number who oppose it."
What happened to the first case filed in 1992?
The trademark board ruled in favor of the petitioners in a 145-page decision in Harjo in 1999 and canceled the trademark registrations. On appeal, the U.S. District Court for the District of Columbia ruled that the petitioners waited too long after reaching 18, the age of majority, before filing the trademark suit, and that the trademark board's decision was not supported by substantial evidence because it was not adequately explained. The U.S. Court of Appeals for the D.C. Circuit affirmed the age-of-majority ruling and did not comment on the evidence question. Harjo ended in 2009 when the Supreme Court declined to hear it.
How did the second case come about?
Blackhorse includes younger petitioners to limit the age-of-majority argument. The case was filed in 2006, when the petitioners were as young as 18, and went active in 2009 when Harjo ended. Blackhorse was argued before the trademark board on March 7, 2013, and a decision is pending.
Who pays for the litigation costs?
Jesse A. Witten represents the petitioners pro bono. He says his firm of Drinker, Biddle & Reath is the third to represent the two sets of petitioners pro bono since 1992. The NFL pays for teams' legal costs in all trademark cases. "The clubs have authorized the league office to manage and protect the collective trademarks of the NFL and the 32 teams," NFL spokesman Greg Aiello said by email.
What happens if the trademark registrations are canceled?
The team retains its federal trademark rights during a possible appeal. Even if it loses on appeal, the team can continue to assert its trademark rights under common law and state statues. Farley says that would present interesting legal arguments. She says to her knowledge no one has ever sued for trademark infringement based on a common law mark when the mark's registration has been canceled as disparaging.
"I think it is entirely possible for a court in that circumstance to say, 'You've come to a court of equity with unclean hands and we are going to deny you your remedy,' " Farley says. "We don't really know what would happen."