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.
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.
Petitioners, five Native Americans(Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tsotigh), have brought this cancellation proceeding pursuant to Section 14 of the Trademark Act of 1946, 15 U.S.C. § 1064(c). They seek to cancel respondent’s registrations issued between 1967 and 1990 for trademarks consisting in whole or in part of the term REDSKINS for professional football-related services on the ground that the registrations were obtained contrary to Section 2(a), 15 U.S.C. § 1052(a), which prohibits registration of marks that may disparage persons or bring them into contempt or disrepute. In its answer, defendant, Pro-Football, Inc., asserted various affirmative defenses including laches.
From the Minority Opinion:
The evidence supporting the majority’s finding of fact No. 27 that "[a]pproximately 150 tribes were members
[of the NCAI] in 1993" and its conclusion that "[t]he NCAI members throughout the time period represent
approximately 30 percent of Native Americans" is a house of cards that collapses upon examination.
In view of the above, "after a careful study of all the facts" and "due caution," I find that petitioners failed to
show by a preponderance of the evidence that a substantial composite of Native Americans found the term
REDSKINS to be disparaging in connection with respondent’s services during the relevant time frame of
1967-1990. Accordingly, the six registrations should not be cancelled under Sections 2(a) and 14(3) of the
The Court provided a Media Guide to simplify the ruling for easy public digestion:
What this decision means: if the cancellation of the registrations for the trademarks involved in this case is not appealed or not affirmed following possible review by a federal court, Pro Football, Inc., as record owner of the involved registrations will lose the legal benefits conferred by federal registration of the marks. These benefits of federal registration include:
- the legal presumptions of ownership and of a nationwide scope of rights in these trademarks;
- the ability to use the federal registration ® symbol, and;
- the ability to record the registrations with the U.S. Customs and Border Patrol Service so as to block the importation of infringing or counterfeit foreign goods.
What this decision does not mean: this decision does not, however, require the Washington D.C. professional football team to change its name or stop using the trademarks at issue in this case.
- Losing the federal registration of a trademark does not necessarily mean that the owner loses all legal rights in the mark. This is because trademark rights in the United States come from use of a mark on or in conjunction with goods or services, not merely from the additional, optional step of federal registration.
- The TTAB determines only whether a mark can be registered with the federal government (and thus gain the additional legal benefits thereof), not whether it can be used.
- The mark owner may still have rights in the mark based on use, known as "common law" right.
Get your T-Shirt press-ons ready...
Redskins will likely pursue a stay of the USPTO's decision. If they can't, then anyone can legally start using their logo.— Albert Breer (@AlbertBreer) June 18, 2014
Dan Snyder refuses to comment on the decision after Redskins mini-camp practice concluded today:
Daniel Snyder declined to comment on the ruling in the Redskins name case as he left the practice field today at the team's mincamp.— MarkMaske (@MarkMaske) June 18, 2014
Snyder did not verbally acknowledge a reporter's question on the issue. He waved his hand and kept walking.— MarkMaske (@MarkMaske) June 18, 2014
Team President/GM Bruce Allen's response:
Bruce Allen when asked whether the Redskins can continue to use their name: "Did you read it?... We're fine. We're fine."— MarkMaske (@MarkMaske) June 18, 2014
[UPDATE: 6/18/14 12:15PM] The Redskins have issued a statement saying the team will appeal the ruling:
LOUDOUN COUNTY, Va. - The following is a statement by Bob Raskopf, trademark attorney for the Washington Redskins, regarding today's split decision by the Trademark Trial and Appeal Board:
"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.
‘Redskins Are Denied Trademarks'
-Washington Post, April 3, 1999
‘Redskins Can Keep Trademark, Judge Rules'
-Washington Post, October 2, 2003
We are confident we will prevail once again, and that the Trademark Trial and Appeal Board's divided ruling will be overturned on appeal. This case is no different than an earlier case, where the Board cancelled the Redskins' trademark registrations, and where a federal district court disagreed and reversed the Board.
As today's dissenting opinion correctly states, "the same evidence previously found insufficient to support cancellation" here "remains insufficient" and does not support cancellation.
This ruling - which of course we will appeal - simply addresses the team's federal trademark registrations, and the team will continue to own and be able to protect its marks without the registrations. The registrations will remain effective while the case is on appeal.
When the case first arose more than 20 years ago, a federal judge in the District of Columbia ruled on appeal in favor of the Washington Redskins and their trademark registrations.
As the district court's ruling made clear in 2003, the evidence ‘is insufficient to conclude that during the relevant time periods the trademark at issue disparaged Native Americans...' The court continued, ‘The Court concludes that the [Board's] finding that the marks at issue ‘may disparage' Native Americans is unsupported by substantial evidence, is logically flawed, and fails to apply the correct legal standard to its own findings of fact.' Those aren't my words. That was the court's conclusion. We are confident that when a district court review's today's split decision, it will reach a similar conclusion.
In today's ruling, the Board's Marc Bergsman agreed, concluding in his dissenting opinion:
It is astounding that the petitioners did not submit any evidence regarding the Native American population during the relevant time frame, nor did they introduce any evidence or argument as to what comprises a substantial composite of that population thereby leaving it to the majority to make petitioner's case have some semblance of meaning.
The evidence in the current claim is virtually identical to the evidence a federal judge decided was insufficient more than ten years ago. We expect the same ultimate outcome here."