Jul 13, 2015

Trademark Invalidity: 6-0 to the Native Americans but will the Redskins take the next round?

American football teams experience winning and losing on the football field but the Washington Redskins have suffered a defeat off the pitch in relation to their case for six of their trademarks.  In Pro-football Inc v Amanda Blackhorse et al the Redskins brought a further appeal of the decision to invalidate six of their trade marks as a result of concern that they were disparaging to Native Americans.


The case started life in the United States Patents and Trademarks Office moved on to the Trademark Trial and Appeal Board ("TTAB") and was finally heard by the District Court of Virginia.

The Washington Redskins name has been debated for decades with opposition coming from Native Americans who deem it to be 'disparaging'. Over a year ago the Appeal Board, by a 2-to-1 vote, held that the six trademarks in question were offensive under section 2(a) of the Lanham Act, 15 U.S.C, 1052(a) which makes them ineligible for trade mark protection.

The Redskins asserted their most recent motion in seven different causes of action:

a declaration of non-disparagement;
a declaration of non-contempt or disrepute;
that section 2(a) of the Lanham Act violates their First Amendment right to free speech;
that the above section is void for vagueness;
that section 2(a) violates the Due Process Clause under the Fifth Amendment;
the TTAB order violates the Taking Clause of the Fifth Amendment; and
that the petition by Blackhorse was barred by the doctrine of laches.

In the instant case there were two aspects for the Court to consider:

Constitutional Claims; and
Lanham Act Challenges.


Constitutional Claims

The judgement initially dealt with the constitutional matters. The Judge denied the Redskin's argument that their free speach would be impeded.  He did so on the basis that no speech was impinged as the Redskins could continue to use the trade marks; it simply would not have the right to register them and benefit from the protection that registration provides.  Further the trade mark registry was deemed to be government speech so it is not protected by the First Amendment and it was also not protected commercial speech.

The Redskins also lost their challenge that Section 2(a) of the Lanham Act was void under the Fifth Amendment for being too vague.

Lanham Act Challenges

Two specific questions were relevant in determining whether a trade mark contains matter that may disparage Native Americans:

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?
Is the meaning one that may disparage Native Americans?

It is important to note that the eyes through which the questions had to be determined was judged through the eyes of those affected and not the general public.  Further, the eyes of those affected must be a 'substantial composite' of this group i.e. Native Americans.

The term 'redskins' is and has been for some time associated with Native Americans and the trademarks are shown as a Native American with a traditional headdress.  Further the cheerleaders and marching band all wear Native American dress.  The Judge stated that there was a connection and the meaning was clear. The Judge then decided that it was in bad standing and that the name is 'disparaging'

The second question was largely and academic study and the three primary sources are used in determining whether the meaning of the marks may disparage Native Americans were held to be: dictionary definitions and accompanying editorial designations; scholarly, literary and media references; and statements made by individuals or group leaders of the references group regarding the term.

Considering such sources many dictionary references referred tot he fact that the term may be considered offensive towards or by Native Americans, this was backed up by the scholarly, literary and media articles and references and several Native American group leaders have spoken against the name over the years.  The Judge therefore held that the marks may be disparaging to the relevant group.

Due to the nature of this case, with commercial and constitutional law clashing, it is highly likely that an appeal will be made by the Redskins and it is surely a decision for the Supreme Court.

in: Case Law, News, Trade Marks

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