What’s the next play for the Redskins? What Blackhorse really means for the football team

In a long-awaited decision, Blackhorse v Pro-Football Inc (Cancellation No 92046185, June 18 2014), the Trademark Trial and Appeal Board (TTAB) has directed that six REDSKINS trademark registrations be cancelled because they were disparaging to Native American Indians. 

Blackhorse has received unusually wide coverage for a TTAB decision, reflecting America’s current spirited political debate over the propriety of making commercial use of potentially ethnically offensive words. Alas, most coverage of Blackhorse has inaccurately portrayed both the substance of the TTAB’s decision and its long-term effects.

The Washington Redskins football team has been using REDSKINS marks since as early as 1932. Between 1967 and 1990, it registered the six REDSKINS marks at issue. In 1992 Native American artist and activist Suzan Harjo filed a petition to cancel these registrations under Section 2(a) of the Lanham Act because they disparaged Native Americans. In 1999 the TTAB ruled that the marks were disparaging, but the reviewing court overturned the decision both on the merits and on the basis of laches (ie, the petitioners’ undue delay in seeking the marks’ cancellation, on which the registrant relied to its detriment).

The present case arose against that background. In 2006 Amanda Blackhorse, a Native American who had just reached the age of majority, and four similarly situated Native Americans, filed a new cancellation petition, on the same bases as Harjo. Both parties stipulated to relying on the Harjo record for the lion’s share of the evidence.

Although the original and primary meaning of the term 'redskin' was a reference to Native Americans, whom European settlers perceived as having reddish skin colour, the registrant argued that the term, as used in the context of sports, had gained a secondary meaning, denoting the football team. However, the TTAB found that “the evidence overwhelmingly supports a determination that the term 'redskin' as it appears in the marks retains the meaning Native American” (emphasis added). It did not help the registrant that two of the marks included Native American imagery, such as the profile of an American Indian, and that the team’s marching band and cheerleaders wore feathered headdresses and costumes suggestive of Native Americans.

The TTAB next considered whether the term 'redskin' was disparaging to Native Americans. The registrant introduced a variety of evidence indicating that many Native Americans were not offended by the REDSKINS marks when they were registered. However, the TTAB noted that whether certain Native Americans were not offended was irrelevant - what mattered was that a substantial number were. As evidence, the TTAB cited a 1993 resolution from the National Congress of American Indians, representing at least 30% of Native Americans, stating that the term 'redskins' “has always been and continues to be a pejorative, derogatory, denigrating, offensive, scandalous, contemptuous, disreputable, disparaging and racist designation for Native American[s]…”. It also cited numerous dictionary definitions that characterised the term as offensive. Ultimately, the TTAB concluded that a “substantial composite” of Native Americans deemed the marks disparaging when the trademark registrations were issued.

One TTAB member dissented, opining that the evidence fell short of showing that the term was disparaging when the registrations were issued between 1967 and 1990. The two TTAB members in the majority, however, found that evidence, such as the 1993 National Congress of American Indians resolution, permitted a reasonable inference that the term had been regarded as disparaging for some time, from the late 1960s through the 1990s.

Finally, the TTAB noted that the equitable defence of laches should not bar litigation concerning public interest: “It is difficult to justify a balancing of equities where a registrant’s financial interest is weighed against human dignity.” The TTAB determined that, even if laches were applicable, the petitioners did not unreasonably delay, having filed shortly after reaching majority. Moreover, the registrant’s massive investments in the REDSKINS marks during the earlier Harjo appeal suggested that it did not rely on the sanctity of the marks’ federal registration to its detriment.      

Legally, Blackhorse will remain significant for two reasons: clarifying the scope of a Section 2(a) disparagement inquiry, and showing what types of evidence most effectively prove disparagement.

The social impact of this decision is best understood in the context of the spirited political debate over the propriety of making commercial use of offensive words. Rightly or wrongly, many consider federal trademark registrations to be governmental endorsements of the registered marks. The Washington Redskins brand has been criticised by many as disparaging. Shortly after the TTAB published its decision, eager commentators celebrated the decision, praising it for removing protection for the REDSKINS marks. By cancelling these registrations, the TTAB removed any hint of official government approval of these marks.

The TTAB decision, if upheld, could adversely affect the football team’s foreign registrations, its trademark licences and its ability to stop counterfeit products at the border - all of which are predicated on the cancelled US registrations.

However, would-be counterfeiters cannot begin infringing with impunity quite yet. The REDSKINS marks have been used for decades to identify the team, so it retains common law rights in these marks. Moreover, even without federal trademark registrations, the team can protect its marks from infringement under other Lanham Act provisions that do not rely on federal registrations, such as Section 43, governing unfair competition (15 USC § 1125).

Moreover, the registrant has vowed to appeal the decision. Under recent legislation, it may appeal to the US District Court for the Eastern District of Virginia, rather than the US District Court for the District of Columbia, which reviewed the Harjo case. The Eastern District and its reviewing court, the Court of Appeals for the Fourth Circuit (regarded as more conservative than the District of Columbia federal courts) will carefully review whether there was substantial evidence that the term 'redskins' was disparaging when the trademark registrations issued - that was the key issue raised by the TTAB dissent. The TTAB reviewed the evidentiary record carefully to determine the viewpoints of a substantial composite of Native Americans in a time period beginning over 40 years ago. This was a very difficult task, which, the dissent implied, invited retrospective perception of disparagement based on current, evolving social mores.

The cancellations will be stayed pending the appeal, which should wend its way through the courts over the next few years. So the marks will remain on the US Trademark Register for years to come. In American football parlance, the game is not over; it’s just half-time.           

James L Bikoff, David K Heasley, Griffin Barnett, Valeriya Sherman and Jared Stipelman, Silverberg Goldman & Bikoff LLP, Washington DC