For over the last couple decades, there has been a movement where all athletic teams and programs which use a nickname/mascot that refers to any Native American tribe to change their name/mascot. Many teams throughout history have voluntarily changed their name: Miami University RedHawks (formerly Redskins until 1996); Marquette University Golden Eagles (formerly Warriors until 1994); St. John’s University Red Storm (formerly Redmen until 1994); University of North Dakota (currently no team name, retired Fighting Sioux in 2012). Other teams have refrained from using any Native American images in their logos, such as: University of Illinois Fighting Illini, Cleveland Indians, and the Golden State Warriors.
The most recent pressure has been placed on the NFL’s Washington Redskins to change their name by various members of the Native American community, as well as several members of the US Senate and even the President. On June 18, theTrademark Trial and Appeal Board of the United States Patent and Trademark Office canceled six federal trademark registrations that were owned by the Redskins. The Trademark Trial and Appeal Board (TTAB) is an independent administrative tribunal within the the United States Patent and Trademark Office (USPTO) that is responsible for hearing and deciding various issues that arise in federal trademark applications and registrations. The TTAB does not handle trademark infringement cases, they only have the power to determine the registrability of a trademark. Further, a trademark that is disparaging to a group of people is not afforded federal trademark protection.
There is a two step test that is implemented to determine whether a trademark is disparaging: (1) would the trademark be understood, in its context, as referring to an identifiable group of people, and (2) may that reference be perceived as disparaging to a substantial composite of that group. Consideration to prove these two elements may consist of the dictionary definition of the terms used in the mark, the relationship of the term and other elements in the mark, the type of product or service which the mark appears, and how the mark is used in the public marketplace.
In the Washington Redskins’ case, the TTAB ruled that the challenging party, established by a preponderance of the evidence that the term “Redskins” was disparaging of Native Americans when used in relation to professional football services. In short, if the Washington Redskins do not appeal, or they do appeal and the decision is affirmed, they will lose all the legal benefits conferred by owning a federal trademark registration. This includes: a legal presumption of ownership of the registered mark throughout the nation; priority rights to protect the registered mark against any infringing mark throughout the nation; ability to use the ® symbol; and the ability to sue in federal court on any infringing trademarks.
What the TTAB’s ruling does not mean: the team does not have to change their name, the team does not have to stop using the “Redskins” trademarks that have been cancelled in this ruling, the team does not lose all legal protections in the trademark as their may be remedies available at state law and common law which provide legal rights in use alone.
The Washington Redskins have a couple options in regards to their federal trademark rights. They can either change their team name, which would result in spending possibly millions of dollars in fees/merchandise/marketing a new name, or they may appeal the decision of the TTAB to a US federal court. This is not the first time this has happened to the Redskins. Back in 1999 the TTAB which canceled a trademark belonging to the team under the identical theory. The US Court of Appeals for the District of Columbia reversed that ruling on the legal defense of latches, which in non-legal terms means that the plaintiff waited too long to bring the suit when he had the necessary elements to satisfy a valid legal claim.
Unless public pressure changes owner Dan Snyder’s mind, expect that the team will take this recent ruling to the federal courts.
For more information on the TTAB’s ruling see a summary fact sheet about the ruling, or look at the full opinion from the TTAB.
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