The Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office has cancelled the Redskins trademark registration.  The decision can be found here at http://ttabvue.uspto.gov/ttabvue/ under Proceeding No. 92046185.  A petition was filed in August 2006 by six Native Americans (Amanda Blackhorse, Marcus Briggs, Phillip Gover, Shquanebin Lone-Bentley, Jillian Pappan, and Courtney Tsotigh) to cancel six trademarks owned by Pro Football, Inc.  Pro Football, Inc. does business as The Washington Redskins.[1] Proceedings in Blackhorse et al. v. Pro Football, Inc. were suspended pending the outcome of the Harjo v. Pro-Football, Inc. case, infra.[2]  The proceedings resumed in March 2010.[3]

The marks were REDSKINETTES (typeset word(s)), REDSKINS (typeset word(s)), THE REDSKINS (drawing which includes word(s)), WASHINGTON REDSKINS (drawing which includes word(s)), WASHINGTON REDSKINS (typeset word(s)), and THE REDSKINS (drawing which includes word(s) in stylized form).[4] The registrations for the marks above were issued in 1990, 1978, 1974, 1974, 1974, and 1967 respectively.[5]

In its decision, the TTAB stated “these registrations must be 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).”[6]

The Board applied a two-step analysis in finding that the marks were disparaging.  The steps are: “a. 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?” and “b. Is the meaning of the marks one that may disparage Native Americans?”[7] The Board found that the Pro Football, Inc.'s alleged honorable intent and manner of use do not contribute to the determination of whether the term is disparaging.[8] The record established that at least thirty percent of Native Americans found REDSKINS used in connection with Pro Football, Inc.'s services to be disparaging at the time they were registered.[9] The Board found this number to be substantial.[10]

The Board found that Pro Football's laches defense does not apply 1) when plaintiffs simply comprise one or more members of a group to which the disparagement relates and 2) where a broader public policy is concerned.[11]

This is not the first time a group of Native Americans have filed a petition to cancel the Redskin marks. In Harjo v. Pro Football, a petition for cancellation was filed in 1992.  The Board held that the marks were disparaging to Native Americans when registered and ordered the registrations cancelled.[12]  Pro Football, Inc. appealed to the U.S. District Court for the District of Columbia.  The District Court reversed the Board on the grounds of laches and a lack of substantial evidence supporting the finding of disparagement.[13]  The Appeals Court remanded the case to the District Court regarding one of the Native American's claims was barred by laches.[14]  The District Court found that the claim was barred by laches.[15] The issue of whether there was substantial evidence supporting the finding of disparagement was left unresolved.[16]  Upon another appeal, the Appeals Court affirmed the decision of the District Court on laches in 2009.[17]

The TTAB's decision only affects the right of Pro Football, Inc. to have a federal registration on the marks listed above.  It does not have jurisdiction to prevent Pro Football, Inc. from using the marks.  However, without a trademark registration, Pro Football, Inc. cannot file a suit in federal court for trademark infringement or stop infringing goods bearing the marks from entering the United States.

The TTAB's decision to cancel the marks can be appealed to the U.S. District Court for the Eastern District of Virginia or the Court of Appeals for the Federal Circuit due to a venue change in the America Invents Act.[18]  Pro Football, Inc. is allowed to keep its registrations during the appeal process.  In the event an Appeals Court affirms the TTAB decision to cancel the marks in question, Pro Football, Inc. may still assert common law trademark rights for the marks.

[1] Blackhorse v. Pro-Football, Inc., Cancellation No. 92046185 at 1-4 (June 18, 2014).

[2] Id. at 7 (June 18, 2014).

[3] Id.

[4] Blackhorse v. Pro-Football, Inc., Cancellation No. 92046185 at 2-4 (June 18, 2014); U.S. Trademark Registration Nos. 1606810, 1085092, 987127, 986668, 978824, and 836122 respectively.

[5] Blackhorse v. Pro-Football, Inc., Cancellation No. 92046185 at 2-4 (June 18, 2014).

[6] Id. at 2 (June 18, 2014).

[7] Id. at 15 (June 18, 2014).

[8] Id. at 23-24 (June 18, 2014).

[9] Id. at 71-72 (June 18, 2014).

[10] Id. at 71-72 (June 18, 2014).

[11] Id. at 74-76 (June 18, 2014).

[12] Id. at 5 (June 18, 2014) citing Harjo v. Pro Football, Inc., 30 USPQ2d 1828, 1833 (TTAB 1994) and 50 USPQ2d 1705, 1710 (TTAB 1999).

[13] Id. at 5 (June 18, 2014) citing Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96 (D.D.C. 2003).

[14] Id. at 6 (June 18, 2014) citing Pro-Football, Inc. v. Harjo, 415 F.3d 44 (D.D. Cir. 2005).

[15] Id. at 6 (June 18, 2014) citing Pro-Football, Inc. v. Harjo, 567 F. Supp.2d 46 (D.D.C. 2008).

[16] Id. at 6 (June 18, 2014).

[17] Id. at 6 (June 18, 2014) citing Pro Football, Inc. v. Harjo, 565 F.3d 880 (D.C. Cir. 2009).

[18] Id. at 74 (June 18, 2014).