Wednesday, August 27, 2014

Redskins Trademark Dispute Goes Into Overtime

By Nicole M. Meyer

Whether you genuinely love football, like I do, or just want to brush up on current sporting “events” to discuss with friends, colleagues or clients, here is the low-down on the continuing dispute over the Redskins’ federal trademark registrations…a saga that has spanned three decades and has people across the nation debating what is disparaging or offensive, and what is political correctness gone too far.

In 1992, seven Native Americans filed a Petition to Cancel with the Trademark Trial and Appeal Board (“the Board”) to cancel federal registrations owned by Pro-Football, Inc. for marks consisting of, or containing, the term “Redskins” in connection with football games. These registrations originally issued between 1967 and 1990. In 1999, the Board granted the Petition to Cancel pursuant to Section 2(a) of the Lanham Act, on the basis that the REDSKINS mark may disparage Native Americans, or bring them into contempt or disrepute, and Pro-Football, Inc. appealed the decision to the District Court of the District of Columbia (“the District Court”). In 2003, the District Court concluded that the Board’s determination that the REDSKINS mark may disparage Native Americans was not supported by substantial evidence, and that the Native American Petitioners may have waited too long to bring their claim (in other words, their claim was barred under the doctrine of “laches”). The laches issue was appealed to the United States Court of Appeal for the District of Columbia Circuit and ultimately affirmed. The Petitioners filed a Petition for a writ of certiorari with the Supreme Court, but they refused to hear the case. The first half went to the Redskins.

In 2006, six different Native American Petitioners filed another Petition to Cancel the same REDSKINS-related federal registrations. The parties relied heavily on the evidence submitted in the previous Board proceeding. On June 18, 2014, the Board issued its 2-1 decision, granting the Petition to Cancel finding that, based on the evidence before them, those registrations must be cancelled because they were disparaging to Native Americans at the respective times they were registered. Such cancellation only affects the ability of Pro-Football, Inc. to register those marks, as the Board does not have the authority to enjoin use of the marks.

In its 2014 decision, the Board found that the mark REDSKINS, in connection with football, may be disparaging, and clarified that, in deciding whether the term may be disparaging, the standard is to look to the views of a substantial composite of Native Americans, not the American public as a whole. The evidence presented before the Board consisted of the parties’ experts, dictionary definitions, reference books, newspaper articles, reports, official records and letters of protest, and deposition testimony, in part, from the Executive Director of the National Congress of American Indians. The Board found that, at a minimum, thirty percent of Native Americans found the term “Redskins” to be disparaging during the relevant time period (1967-1990). Additionally, they found that Respondent’s laches defense does not apply to a disparagement claim where the disparagement pertains to a group of which the individual plaintiffs simply comprise one or more members, and where there is a broader public policy to protect than the ability of a trademark owner to protect its mark. The Board also found that the individual Petitioners had not unreasonably delayed in bringing their claims, and the Respondent had not been prejudiced by the delay.

In its decision, the Board relied, in part, on dictionary definitions for the term REDSKINS and testimony from the National Congress of American Indians. In his dissent, Administrative Trademark Judge Marc Bergsman (for purposes of full disclosure, I note that Mr. Bergsman was formerly a partner in the trademark department of Dickinson Wright) disagreed with the Board’s decision, on the basis that the dictionary evidence was inconclusive and there was no reliable evidence to corroborate the testimony of the National Congress of American Indians. Moreover, Mr. Bergsman pointed out that the evidence in this proceeding was largely identical to the evidence submitted in the previous proceeding, wherein the Board’s decision was overturned by the District Court (which found the evidence insufficient for a finding of disparagement). The dissent reiterated that its holding was not founded on a belief that the term REDSKINS was not disparaging during the relevant time period, but rather merely that the evidence submitted was not sufficient to establish that it was disparaging to the relevant public during the time period at issue. Despite the dissent, the board found for the Petitioners and granted the Petition to Cancel.

On August 14, 2014, the Washington Redskins filed an “appeal” of the Board’s decision with the United States District Court for the Eastern District of Virginia. The appeal is in the form of a complaint filed against the Petitioners of the recent Board proceeding. With the 2014 football season just around the corner, this dispute is entering overtime and shows no signs of resolving this season, or next.