Today, the Trademark Trial and Appeal Board (TTAB), cancelled six registered trademarks, that include the term “Redskins” for the Washington Redskins, owned by the NFL. The plaintiffs in the matter were able to prove by a preponderance of the evidence that the term Redskins is “disparaging” to a substantial composite of the Native American population.
Under Section 2(a) of the Trademark Act, words that “may disparage” individuals or groups or “bring them into contempt or disrepute” are not permitted as trademarks. The ruling pertains to six different trademarks associated with the team, each containing the word “Redskin.” When it comes to showing that a trademark is disparaging, the plaintiffs must meet a two-part test: (1) the likely meaning of the mark and (2) if that meaning refers to an identifiable group, that the meaning is disparaging to a substantial composite of that group.
After hearing both sides argue the meaning of the term “Redskins,” the Administrative Trademark Judge Kuhlke concluded in her opinion, that the meaning of the term “Redskins” retains the meaning to identify Native Americans even when it is also used for an NFL team. To argue the second prong about “disparagement,” both sides presented experts to prove whether the term “Redskins” was considered disparaging. Judge Kuhlke agreed with the Plaintiff’s expert, Dr. Barnhart, that the term refers to Native American’s skin color, as well as negative portrayals in the media, and also dictionary definitions that include “it is not a preferred term.”
To prove that the mark is disparaging, Judge Kuhlke pointed out that that only a substantial composite of Native Americans needed to be disparaged by the term at the time of the filing, not a majority. The Plaintiff used evidence of a resolution passed by the NCAI, one of the oldest organizations in the United States that represents various Native American tribes. It passed a resolution in 1993 where it corroborated a 1972 meeting with the President of the NCAI and the then Owner of the Washington Redskins. The NCAI President told the owner that “Redskin” was a racial slur. In 1972, NCAI represented approximately 30% of the Native American population. According to Judge Kuhlke, 30% satisfies the “substantial composite” requirement. Simply put:
“The ultimate decision is based on whether the evidence shows that a substantial composite of the Native American population found the term “Redskins” to be disparaging when the respective registrations issued. Heeb Media LLC, 89 USPQ2d at 1077. Therefore, once a substantial composite has been found, the mere existence of differing opinions cannot change the conclusion.”
As such, the TTAB held that the Plaintiff’s proved by the preponderance of evidence that the term “Redskin” is disparaging to a substantial composite of the Native American population and that the federal trademark for the Washington Redskins will be cancelled.
The NFL will certainly appeal in the federal courts primarily to flesh out the issue of their affirmative defense of laches, which is somewhat similar to a statute of limitations defense. The NFL may argue that the term “Redskins” has been used for so long that the unreasonable delay in seeking relief bars the Plaintiff recovery. However, Judge here pointed out that the laches defense should not apply in cases dealing with a term of disparagement.
“It is difficult to justify a balancing of equities where a registrant’s financial interest is weighed against human dignity. To apply laches to this type of claim contemplates the retention on the register of a mark determined by the Board to be a racial slur, in blatant violation of the Trademark Act’s prohibition against registration of such matter, merely because an individual plaintiff “unreasonably delayed” in filing a petition to cancel.”
The opinion bolstered its holding by using various examples where public policy concerns trumps a laches defense. Although the opinion shot down the NFL’s laches defense based upon a greater need of public policy, the TTAB reserved this issue for appeals and specifically stated that the issue can be revisited because of the more recent passage of the American Invents Act.