The Washington Wrong-Skins: A Moral Victory over Tasteless Trademarks

The football field is for helmets not headdresses. In the much talked about June 18, 2014 decision in Blackhorse v Pro Football, Inc. the United States Patent and Trademark Office (USPTO) made a clear statement that culturally-insensitive trademarks would not be tolerated. The Trademark Trial and Appeal Board (TTAB) decided to cancel six federal trademark registrations for the name “Washington Redskins,” concluding that the football team’s moniker was “disparaging to Native Americans.” Although the issue is far from being settled, it is a substantial step in the fight against racially offensive mascots and names.

 

The Game So Far

The story begins with Harjo v Pro Football, Inc. In Harjo the TTAB decided to cancel six of the Washington team’s trademarks, determining  that the marks “may disparage Native Americans and may bring them into contempt or disrepute.” However, as noted by attorney and professor Michael McCann, the decision was overturned on appeal in 2003. Fast-forward to 2014 and the play has been run again. On June 18th, the TTAB issued the Blackhorse decision. Once again, six trademark registrations issued between 1967 and 1990 for the Washington football team’s marks containing  the term “redskins” were 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).”

 

Section 2(a) of the Lanham Act provides that a trademark can be refused registration if it consists of “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.” The principle point of conflict for the plaintiffs was the racist nature of the term “redskin.” According to news reports, Blackhorse released the following statement: “The team’s name is racist and derogatory. I’ve said it before and I will say it again – if people wouldn’t dare call a Native American a “redskin” because they know it is offensive, how can an NFL football team have this name?”

 

“And Just Like Last Time, Today’s Ruling Will Have No Effect…”

On the other side of the field Bob Raskopt, the team’s attorney, issued a statement saying: “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.” So why does Raskopt seem so confident? Well firstly, the dissent asserts that the evidence provided by the plaintiffs failed to show “that a substantial composite of Native Americans found the term “Redskins” to be disparaging in connection with [the football team’s] services during the relevant time frame.” The issue is that the evidence in question was almost identical to what was submitted in the overturned Harjo case, evidence that was found to be insufficient to uphold the cancellation order. Precedent would thus lead one to believe that the football team is likely to see  the same victorious end result as Harjo when they appeal.

If, however, Raskopt is unsuccessful on appeal, the team will lose the legal benefits of federal trademark registration. As described by the USPTO’s official statement  on the matter, lost benefits would include no longer having legal presumptions of ownership or rights in the marks, and no longer being able to stop the importation of infringing or counterfeit goods. According to McCann, since the football team would have far less protections from other businesses exploiting their name (ex. in merchandise or apparel), in theory millions of dollars could be lost.

 

However, the team will not see money fly out of the bank just yet – they still have exclusive use of the logo and existing contracts for the production of “Redskins” products will not be nullified by the cancellation. Most importantly, the TTAB cannot force the team to change its name or marks. If the team does decide to continue using the “Redskins” moniker, ruling and public opinion aside, the state and common laws of where the team does business may provide trademark protections. An attempt to enforce exclusivity could also be made using Section 43 of the Lanham Act, which allows for civil action against those who use a word, symbol, name etc. in a confusing way that may connect to and subsequently damage another entity. Thus, remedies still exist for the football team if the registrations are lost after the appeal.

But is a Moral Victory Enough?

As it stands the football team does not need to change its name, may still be protected under state and common laws, will not see any immediate economic losses, and could seek exclusivity under Section 43 of the Lanham Act. So, after the whistle is blown, did the plaintiffs win anything more than a thumbs-up from the TTAB? While a moral victory does not have the same legal repercussions as may be desired by the plaintiffs, it does represent a growing trend in public opinion against derogatory names and symbols in sports that could force even the most stubborn mind to change. And this public opinion has been voiced fairly loudly. News sources have reported that fifty U.S. senators wrote to NFL commissioner Roger Goodell, asking him to recommend a name change for the team, that newspapers like the San Francisco Chronicle have announced they will stop printing the name “Redskins” when referring to the football team and that even President Obama has even weighed in on the issue, saying he would consider changing the team’s name if he knew it offended a large group of people.

It is not yet known how the negative publicity triggered by this case may impact the value of the team’s trademarks, registered or not. Diehard fans may not be swayed to stop buying merchandise, although IPKat blogger Jeremy Phillips made a good point in suggesting that the value of a brand lies in the worth given to it by the consumers of the goods and services for which the mark is used. A mark that has been publically denounced as disparaging to Native Americans may not be so valuable to future buyers of the team’s merchandise.

 

In Conclusion

The play is paused as we wait for the appeal to be heard, but even if the plaintiffs leave the field with the win – nothing but public pressure really has the ability to have the word “redskins” benched for good. It remains to be seen if this will occur, and even though I respect the loyalty many feel towards this historic brand, I know I will be in the stands cheering for a Blackhorse touchdown.

 

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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