Washington Redskins trademark dispute

The Washington Redskins trademark dispute is a legal effort in connection with the Washington Redskins name controversy arising from efforts of those who consider the term "redskin" to be an offensive and disparaging racial slur to prevent the owners of the Washington Redskins football team from being able to assert federal trademark protection for this name. These efforts have primarily been carried forward in two cases brought before the U.S. Patent and Trademark Office (USPTO), and in lobbying efforts before the United States Congress relating to the trademarks at issue.

Harjo case

The first action in the dispute occurred in 1992, when Suzan Shown Harjo, President of the Morning Star Institute, with six other prominent Native Americans represented by the Dorsey & Whitney law firm of Minneapolis, petitioned the USPTO to cancel the trademark registrations owned by the Redskins' corporate entity of Pro-Football, Inc. They based their lawsuit on the claim that federal trademark law states that certain trademark registrations are not legal if they are "disparaging, scandalous, contemptuous, or disreputable." The legal battle went on for seven years. In 1999 the PTO judges canceled the federal registration of the mark REDSKINS "on the grounds that the subject marks may disparage Native Americans and may bring them into contempt or disrepute."^[1] The owners appealed the decision to a district court in the District of Columbia in Pro-Football, Inc. v. Harjo. The court reversed the USPTO's decision on the grounds of insufficient evidence of disparagement. Subsequent appeals have been rejected on the basis of laches, which means that the specific Native American plaintiffs had pursued their rights in an untimely and delayed manner. In 2009 the Supreme Court declined to take up the case.^[2]

Congressional efforts

On March 20, 2013, a bill was introduced in the United States House of Representatives by Eni F.H. Faleomavaega, Delegate from American Samoa, and co-sponsored by 19 others to amend the Trademark Act of 1946 to void any trademark registrations that disparage Native American persons or peoples, such as redskins. Ten members of Congress also sent a letter to the NFL commissioner, all of the team owners including Dan Snyder, and Fred Smith, CEO of FedEx, a primary sponsor of the team; requesting that the name be changed due to the many Native American organizations that oppose the continued use of the name, and in order to fulfill the NFL's own policy regarding diversity.^[3] A co-sponsor, Delegate Eleanor Holmes Norton (D-D.C.), stated she supports the local team but not the name.^[4] The bill remains stalled in Congress, as many congressional supporters of a name change do not believe that federal legislation is the appropriate means to achieve that.^[5] Several of the D.C. area Representatives and Senators declined to comment on the issue. “I don’t consider it part of my role in Congress to weigh in on sports issues,” said Rep. Andy Harris (R-Md.), a Ravens fan, in a statement.^[6] The bill entitled "The Non-Disparagement of Native American Persons or Peoples in Trademark Registration Act" was re-introduced in February, 2015 by Rep. Michael M. Honda (D-California).^[7]

Related trademark actions

Since 1992, the USPTO has rejected eleven applications for other trademarks that included the word redskins, based on the same reason of disparagement. Some of the applications were made by Pro-Football, Inc., including "Washington Redskins Cheerleaders",^[8] some for other products.^[9]The USPTO rejected an application to register "Redskins Hog Rinds" because it "consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs, or national symbols".^[10]

Blackhorse case

A second case was filed, Blackhorse v. Pro-Football, Inc.,^[11] with younger plaintiffs whose standing might not be hindered by laches.^[12] On June 18, 2014, the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) voted to cancel the six trademarks held by the team in a two-to-one decision that held that the term "redskins" is disparaging to a "substantial composite of Native Americans", and this is demonstrated "by the near complete drop-off in usage of 'redskins' as a reference to Native Americans beginning in the 1960s." ^[13][14] The Trademark board asked two questions in determining disparagement: 1) what is the meaning of the mark as it appears in connection with the goods and services in the registrations and 2) is the meaning of the marks one that may be disparaging. The questions are to be answered in the context of the respective dates of registration of each mark.^[15]

Evidence of disparagement submitted by the petitioners in the case include the frequent references to "scalping" made by sportswriters for sixty years when reporting the Redskins loss of a game,^[16] and passages from movies made from the 1940s to the 1960s using "redskin" to refer to Native Americans as a savage enemy.^[17] A linguistics expert for the team unsuccessfully argued that the name is merely a descriptive term no different than other uses of color to differentiate people by race.^[18]

In a press release the trademark attorney for the team stated that they were confident that they would once again prevail on appeal, and that today's decision will make no difference in the continued use of the Redskins name.^[19] Plaintiff Amanda Blackhorse, a social worker and member of the Navajo Nation, said in an interview, "We’ve been through this process for eight years now. We will continue to fight. And, you know, this is not the end for us."^[20] Some legal experts have opined that the ruling could stick this time.^[21]

The political columnist George Will portrayed the case as an example of overreach by government regulatory agencies, arguing that there was an "absence of general or Native American revulsion" toward the name.^[22] A sports columnist for The Washington Post compared the TTAB's actions to "policing speech".^[23] The decision in fact makes no change to the team's use of the name, but withdraws the government from the responsibility to regulate the use of the name by anyone.^[24] The team retains other rights under common law, but must enforce them without government assistance. However, in the opinion of one intellectual property law firm, the team "may be hesitant to sue another for infringing its marks because of the risk that a court could possibly determine that the team has no protectable interest in the name because of its disparaging nature".^[25]

Appeal of Blackhorse decision

The Washington Redskins filed its appeal in the Blackhorse case on August 14, 2014, stating their belief "that the Trademark Trial and Appeal Board (TTAB) ignored both federal case law and the weight of the evidence". They also cite infringement of their First Amendment right to free expression.^[26] On September 22, 2014 the Native Americans asked that the team's appeal be dismissed because it names them as individuals, which is contrary to federal law, and because the appeal was filed with the U.S. District Court in Alexandria, VA, stating that the Redskins should have filed its case against the patent office in the U.S. Court of Appeals for the Federal Circuit in Washington, DC.^[27] In Oct, 2014 Judge Gerald B. Lee rejected the Native American plaintiffs' attempts to have the team's appeal dismissed.^[28]

The ACLU has filed an Amicus brief^[29] stating that while it found the name Redskins repellant, the government should not be able to decide what types of speech are forbidden, and that the provision of the Lanham Act barring the trademark of disparaging terms is unconstitutionally vague in its wording and has not been applied with consistency.^[30] On March 23, 2015 the Attorney General's Office filed a brief addressing the Constitutional issues, stating that as commercial speech, the team name and logo are not protected by the First Amendment, and that there is a large number of cases supporting the cancellation of the trademarks. The brief also stated that the court should also reject the claim that the cancellation of trademarks constitutes an illegal taking of valuable property which is barred by the Fifth Amendment.^[31] By opening up an inquiry into constitutional issues regarding limits on disparaging speech in order to protect "the unique cultural heritage" of the American Indian population, the case may go well beyond what a football team calls itself.^[32] The case will be heard in Virginia on June 23, 2015 but will likely be appealed to the U.S. Supreme Court regardless of the outcome.^[33]

On July 8, 2015, Judge Lee affirmed the decision of the Trademark Trial and Appeal Board.^[34] Judge Lee denied the team's summary judgment motions challenging the constitutionality of the Lanham Act and granted the Blackhorse Defendants' summary judgment motions, finding that "the evidence before the Court supports the legal conclusion that...the Redskin Marks consisted of matter that 'may disparage' a substantial composite of Native Americans." The decision does not bar the team from using the marks going forward, and the order itself is subject to further appeal.^[35]

Team president Bruce Allen expressed surprise at the decision, and that a summary judgement was made by the judge based upon the evidence submitted rather than proceeding to a trial. While the team continues to have certain rights to its trademarks, it must take action to protect those rights individually. The cancellation of federal registration of the trademarks means that the government will no longer take any action against anyone else using the name or logo, such as blocking counterfeit goods from being imported into the country.^[36]

On October 30, 2015 Pro-Football, Inc. filed its appeal^[37] with the United States Court of Appeals for the Fourth Circuit. In addition to maintaining the validity of all the arguments rejected by both the TTAB and the first appeal,^[38] the team has added a list of offensive names that have been given trademarks, thus claiming unequal treatment. The names cited as offensive are mainly sexual or scatological, but do include the racial terms "yid", "dago", "gringo" and "negro".^[39][40] Eighteen law professors have jointly filed an amicus brief in the case stating that the relevant section of the Lanham Act is an unconstitutional intrusion into freedom of expression, and rejecting the TTAB opinion that trademarks are government speech not protected by the first amendment.^[41] Ron Katz, sports attorney and Chair Emeritus of the Institute of Sports Law and Ethics at Santa Clara University, expects the team to win its appeal based upon constitutional grounds, while describing the trademark as "repugnant".^[42]

The Navajo Nation has filed an amicus curiae brief in support of the decision to cancel the trademarks, due to Pro-Football, Inc. stating in its appeal that individual members of the Navajo Nation such as former chairman Peter McDonald do not find the name disparaging. The brief states that these individuals speak only for themselves, while the tribe’s elected, appointed and traditional leaders speak for the Navajo people and present “unified opposition” to the team name because it is disparaging and has a negative psychological effect on tribal members.^[43]

Both the USPTO and Pro-Football, Inc. have requested a review by the Supreme Court of the United States (SCOTUS) of the same legal issue, the constitutionality of banning a disparaging trademark. The USPTO is appealing the decision by the U.S. Court of Appeals for the Federal Circuit which found in December 2015 that part of the Lanham Act is unconstitutional. That case (In Re Tam) involves the denial of a trademark for an Asian-American rock band, "The Slants". Given that case, Pro-Football, Inc. is taking the appeal of their trademark decision directly to the SCOTUS.^[44] Pro-Football, Inc. claims that their case is “a better vehicle” since they have a long history of using the name "Redskins" and have more to lose financially if trademark protection is not restored.^[45] However the court has decided to take up only the Tam case, with a decision due in June 2017.^[46] While refusal to consider the appeal by Pro-Football, Inc. maintains the cancellation of the team's trademarks, a decision in the Tam case that the relevant portion of the Lanham Act is unconstitutional would benefit the Redskins as well.^[47]

These cases have prompted a range of opinions from law professors.

• Megan M. Carpenter, a professor and co-director of the Center for Law and Intellectual Property at the Texas A&M University School of Law: Trademark law should not be used to make moral decisions, which change over time, and notes that the law has been applied unevenly.^[48]
• Christine Haight Farley, a professor at American University Washington College of Law: A distinction should be made between trademarks and government registration. Protection of free speech may allow any trademark to be used, but registration places a seal of approval which should not be given to racist trademarks.^[49]
• Sonia Katyal, professor of law and faculty co-director of the Berkeley Center for Law and Technology at the University of California, Berkeley: A distinction should be made between a racially sensitive trademark being used ironically by the targets of racism in order to reclaim it, and one used offensively. In addition, denying registration is not limiting speech, since the trademark may be used without government protection.^[50]
• Ashutosh Bhagwat, professor of constitutional law at the University of California, Davis, School of Law: Banning any trademark is an unconstitutional violation of free speech protection.^[51]

See also

• "Go Fund Yourself", a 2014 South Park episode referencing the dispute

References