US district court upholds cancellation of ‘Redskins’ registrations
The Washington Redskins has been dealt a blow by a US district court after it reaffirmed a decision by the US Patent and Trademark Office (USPTO) to cancel six of the club’s trademark registrations on grounds that they “may disparage” Native Americans.
The US District Court for the Eastern District of Virginia ruled on the National Football League’s (NFL) motion for summary judgement yesterday, July 8, affirming the USPTO’s cancellation of the registrations last year.
Last year, Amanda Blackhorse and a group of other Native Americans challenged six registrations containing the term ‘Redskins’ obtained between 1967 and 1990, arguing that they may disparage Native Americans.
The USPTO’s Trademark Trial and Appeal Board (TTAB) agreed with Blackhorse in June 2014 and cancelled the registrations.
In response the Redskins sued those who brought the case in an attempt directly to overturn the TTAB’s decision, arguing that the cancellations violated its First Amendment rights.
In addition, the club argued that the term ‘Redskins’ was not disparaging and that Blackhorse’s petition should be rejected on the grounds that there was an unreasonable delay in filing it (laches).
But the district court rejected these arguments and affirmed the TTAB’s decision. It said the “federal trademark registration programme is government speech”, rather than private or commercial speech, and that the cancellations therefore did not restrict the NFL club’s free speech rights.
It added: “The evidence before the court supports the legal conclusion that between 1967 and 1990, the Redskins mark consisted of matter that ‘may disparage’ a substantial composite of Native Americans. Section 2(a) of the Lanham Act requires cancellation of the registrations of the Redskins marks, resulting in their removal from the USPTO’s principal register,” the court said.
The court stressed that “it is the registrations of the Redskins marks that were scheduled for cancellation by the TTAB’s decision, not the trademarks”.
In reaching its conclusion, the court cited dictionary and scholarly evidence that showed the term ‘redskin’ to be offensive to Native Americans. On the question of laches, the court said it does not apply because of the “public interest at stake”.
Jesse Witten, partner at law firm Drinker Biddle and representing Blackhorse, said the decision is a “victory for human dignity and for my courageous clients who have waited for so long for this ruling”.
“Yesterday’s ruling resoundingly affirmed the USPTO’s decision that the team’s trademark registrations should never have been issued. Judge Gerald Bruce Lee found that the evidence we presented—opposition to the team name by the National Congress of American Indians and other leading Native American groups—demonstrated the disparaging nature of the team’s name,” he added.
Tim Kelly, partner at law firm Fitzpatrick, Cella, Harper & Scinto, said the club’s attempts to protect its trademark rights in the interim “will without question take a hit if the decision stands”.
He cited counterfeiting, which he said will become a bigger problem for the Redskins because a registration is a “predicate to recording trademarks with US Customs and Border Protection, which is an important avenue for stopping unauthorised importations of goods bearing the marks”.
Scott Rogers, partner at law firm Ulmer & Berne, also described the decision as a “resounding defeat” for the NFL club.
But he noted that the most significant aspect of the decision for trademark owners is that the “court rejected all constitutional claims” because it “found the registration system to be government speech, not commercial speech”.
WIPR contacted the lawyer representing the Redskins about whether the club plans to appeal against the decision, but he had not responded at the time of publication. We will update the story should he get in touch.
