USPTO Cancels The Redskins’ Trademark– But Not Likely To Stop Its Use
Can’t Stop, Won’t Stop.
Redskins Trademark Cancellation Unlikely To Stop Their Use of the Mark
The Washington Redskins professional football team has existed since 1937. For the past 15 years, the team has been fighting to protect their name. The Washington NFL club claims the team name is a badge of honor meant to exalt Native Americans. To the Native American population, however, the name is a hateful racial slur that disparages their people. On June 18, the U.S. Patent and Trademark Office (USPTO) called the fight, and decided that the NFL franchise no longer has federal protection in their team name.
This decision marks the second time in the past fifteen years that the USPTO has cancelled the REDSKINS mark. In 1992, Susan Harjo and six other Native Americans filed a petition against Pro-Football, Inc. seeking cancellation of six federal registrations for trademarks, including the term REDSKINS. The petition was on the ground that the marks were obtained contrary to § 2(a) of the Lanham Act, which prohibits registration of marks that may disparage persons or bring them into contempt or disrepute. See, Harjo v. Pro-Football, Inc.
Initially, the Trademark Trial and Appeal Board (TTAB) of the USPTO ruled in 1999 that the marks were disparaging. Respondent Pro-Football appealed. Then, in 2003, TTAB reversed, concluding that there was insufficient evidence and the doctrine of laches precluded consideration of the case. The D.C. Circuit affirmed the decision of the lower court in 2008, stating that Harjo’s eight year delay in the cancellation proceeding unreasonably delayed the trial. Thus, the D.C. Circuit decided the case solely on the equitable issue of laches and never addressed the Board’s finding of disparagement on the merits.
While Harjo was pending, five new individual Native Americans, led by Amanda Blackhorse, filed a petition to cancel the same six registrations for the REDSKINS marks. Proceedings were suspended pending the disposition of the Harjo action and resumed in March 2010. A year later, parties agreed that the entire Harjo record may be submitted into evidence.
Then last week, the USPTO decided in Blackhorse v. Pro-Football, Inc. that the marks in question shall be cancelled, and the NFL franchise no longer has federal trademark protection for the term REDSKINS. TTAB concluded that the marks are indeed disparaging to a “substantial composite” of Native Americans when the marks were originally granted between 1967 and 1990.
In reaching its verdict regarding the disparagement claim, TTAB employed a two-step inquiry. Note that both questions are to be answered as of the various dates of the registrations of the involved marks.
First, what is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations?
Specifically, the Board was charged with asking whether the term REDSKINS, when used in connection with professional football services, retains the meaning Native Americans? Due to the overwhelming amount of evidence, this was easily answered, “yes.”
Confirming examples include the fact that, during the relevant time period between 1967 and 1990, the Washington Redskins’ team uniforms contained an image of a Native American on their helmet.
Also, the Redskins’ marching band had worn Native American headdresses as part of its uniforms between the 1960s and the 1990s. Likewise, the Redskinettes appeared wearing costumes suggestive of Native Americans. Additionally, between 1967 and 1979, the annual Washington Redskins press guides displayed Native American imagery on the cover page. Thus, the first prong of the test, “what is the meaning of the matter” is established.
Second, is the meaning of the marks one that may disparage Native Americans?
In deciding this question, the Board looks not to the American public as a whole, but to the view of the referenced group (i.e., Native Americans). The views of that group are reasonably determined by the views of a “substantial composite thereof,” which is not necessarily a majority.
Though the respondents allege that there is honorable intent in the manner of their use of the term REDSKINS, that intent does not contribute to the determination of whether a substantial composite of Native Americans find the term to be “honorable.” In fact, most Native Americans really do not prefer to be called a “Redskin.” Like most dignified humans, they’re not fond of being tagged and grouped by an imaginary skin color.
In assessing this evidence presented by the petitioners, TTAB found that REDSKINS is quite similar to other racial slurs. The decision cited an excerpt from the 1990 book “Unkind Words: Ethnic Labeling from Redskin to WASP”:
“Nearly half of all interracial slurs…refer to real or imagined physical differences…Most references to physical differences are to skin color, which affirms what we have always known about the significance of color in human relations.”
The Board also cited a dictionary definition, noting that the earliest restrictive usage label dates back to 1966 from the Random House Unabridged First Edition indicating REDSKIN is “often offensive.” From 1986 on, all of the other presented dictionary definitions include such restrictive usage labels ranging from “not the preferred term” to “often disparaging and offensive.”
Most poignantly, the Board relied on a 1993 resolution by the National Congress of American Indians (NCIA), which is the oldest and largest intertribal organization nationwide. Since the NCIA consists of members from tribes across the U.S. and is representative of and has advocated for national, regional, and local tribal concerns, TTAB found that NCIA Resolution 93-11 represents the views of a substantial composite of Native Americans. Thus, the opinions voiced within are held to be clearly probative of the views of Native Americans held at the referenced time period. 
Within its text, the resolution states that:
“the term REDSKINS is not and has never been one of honor or respect, but instead, it has always been and continues to be a pejorative, derogatory, denigrating, offensive, scandalous, contemptuous, a disreputable, disparaging and racist designation for Native Americans.”
Pro-Football, Inc. asserted as a defense that the petitioners should have been barred from seeking cancellation because the registrations have existed for so long, and been the subject of significant investment. But the TTAB found the defense inapplicable as to the petitioners in this case.
Regardless, this decision by TTAB does not necessarily put an end to the larger dispute between the parties, as Pro-Football may seek review by a federal court. The registrations will remain on the federal register of marks” and not be listed in the PTO”s records as “cancelled” until after any judicial review is completed.
Washington Redskins’ trademark attorney Robert Raskpof said in a statement:
“We’ve seen this story before. And just like last time, today’s ruling will have no effect at all on the team’s ownership of and right to use the Redskins name and logo.”
What Does this Decision Mean ?
Effectively, the Redskins can live on without federal trademark protection. Cancellation only determines whether a mark can be registered with the federal government (and thus gain additional legal benefits), not whether it can be used. Legal benefits conferred by registration include: the legal presumption of ownership and a nationwide scope of rights in those trademarks; the ability to use the federal registration “®” symbol, and; the ability to record the registration with the U.S. Customs and Border Patrol Service so as to block the importation of infringing or counterfeit goods.
Despite loss of the federal shield, Washington Redskins’ owner Dan Snyder has vowed that he will NEVER change his team’s name. As obstinate as Snyder may be, the Blackhorse decision does not require the Washington, D.C. football team to change its name or stop using its marks. That is because trademark rights in the U.S. comes from use of a mark on or in conjunction with goods or services, not merely from the additional, optional step of federal registration. 
Many critics have suggested that Snyder should at least consider a name change. These critics range from President Obama, to 50 U.S. Senators, to several of the team’s former players. U.S. Senator Harry Reid even refuses to attend a Redskins game until the team changes its nickname.
How Does the Trademark Cancellation Affect the NFL?
This decision could be a major disruption for the entire league, whether or not Snyder concedes to a name change. The Washington Redskins are the third most profitable NFL franchise. Georgetown professor and sports marketing expert Jimmy Lin says: “Sports are driven by economics. Redskins are valued so highly because of the revenue they generate, but mostly because of the merchandising market.”
If the name changes, there could be a broad impact on the league. If such a strong and aggressive franchise like the Redskins drops from the ranks, other market competitors will pick up those falling pieces.
Even if the name doesn’t change, the name REDSKINS could begin to carry baggage with it. A greater portion of the NFL-consuming population will begin to see the term as racist, and at the very least, the highly publicized litigation will take its toll. Sponsors may not want to be associated with the team anymore, thus decreasing the franchise’s value.
No matter the final decision of Dan Snyder, nor the final outcome of the pending appeal, the Washington Redskins will not be able to move on like they did post-Harjo. The public outcry is far stronger than before, and the excuse of a derogatory football nickname being grandfathered into the NFL is no longer tolerable.
 Petitioners include Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan and Courtney Tsotigh.
 Rather, what a “substantial composite” comprises is a fact to be determined at trial. See, In re Heeb Media LLC, 89 USPQD2d 1071, 1074 (TTAB 2008).
 http://ttabvue.uspto.gov/ttabvue/v?pno=92046185&pty=CAN&eno=199 Cancellation No. 92046185, p. 15-22.
 Brady. USA Today.
 Brady, Erik. “Senator Harry Reid refuses to attend Redskins game until team changes nickname.” USA Today. June 16, 2014.