Intellectual Property Attorney

The Washington Redskins Are On the Defensive Over REDSKINS Trademark — Again

It’s deja vu all over again for Pro-Football, Inc., owner of the National Football League’s Washington Redskins. For the second time in two decades, a group of Native Americans is pursuing a petition before the U.S. Patent & Trademark Office to cancel a handful of trademarks containing the term REDSKIN on the grounds that the term is a derogatory, offensive, disparaging and racist designation for Native Americans. While the petition was originally filed in 2006, it had been “on hold” for the past several years. Yesterday, the proceeding took an important step forward when the petitioners filed their trial brief outlining their arguments, allegations and contentions in support of their petition.

The latest challenge, captioned Blackhorse, et al. v. Pro-Football, Inc., Cancellation No. 92/046,185, had been suspended while the first challenge to Pro-Football, Inc.’s trademarks,
Pro-Football, Inc. v. Harjo, played out in federal court. In
Harjo, a group of Native Americans filed a petition in 1996 to cancel certain trademarks containing the term REDSKIN. Those petitioners were initially successful, i.e., in 1999, the Trademark Trial and Appeal Board (“TTAB”) concluded that the trademarks-at-issue “may be disparaging of Native Americans to a substantial composite of this group of people” and, further, that the trademarks “may bring Native Americans into contempt or disrepute.” However, Pro-Football, Inc. successfully challenged the TTAB’s decision at the U.S. District Court for the District of Columbia. The District Court held that the TTAB’s decision was not supported by substantial evidence, as neither historical nor survey evidence demonstrated that the trademarks-at-issue were disparaging when they were registered in 1967. The District Court also held that the doctrine of laches, an equitable defense that the
Harjo petitioners had waited too long to bring their claims, applied and precluded the
Harjo petitioners from obtaining cancellation of the trademarks-at-issue. The District Court’s decision was later upheld on appeal by the U.S. Court of Appeals for the District of Columbia Circuit.

The Blackhorse matter was revived in March 2010, several months after the U.S. Supreme Court denied the
Harjo petitioners their last avenue for appeal, a petition for a writ of certiorari.

The Blackhorse petitioners’ trial brief cites extensive evidence that they claim proves, among other things, that the term REDSKIN is an epithet and that Native American groups have long objected to Pro-Football, Inc.’s use of the term REDSKINS. In one interesting example from the trial brief, petitioners claim that a delegation of Native Americans met with Pro-Football, Inc. in March 1972 and objected to the use of the term REDSKIN. Although petitioners acknowledge that Pro-Football, Inc. did not change the name of the team as a result of that objection, they claim Edward Bennett Williams, then President of Pro-Football, Inc., “change[d] language in the team’s fight song, ‘Hail to the Redskins,’ that mocked Native Americans, and also decided that the team’s cheerleaders would no longer wear Indian-style wigs that stereotyped Native American women.”

Pro-Football, Inc. will have an opportunity to address the allegations contained in petitioners’ trial brief and we will update this blog when that occurs. However, The Washington Post quotes Pro-Football, Inc.’s attorney as stating, “We think the trial judge in D.C. a long time ago ruled there was no substantial evidence the [trade]mark disparaged Native Americans” and is “one of the most well-known pro football teams in the U.S. and a well-respected franchise, that’s what the Washington Redskins mean to the public and we’ve demonstrated that to the satisfaction of a court.”

The case is Blackhorse, et al. v. Pro-Football, Inc., Cancellation No. 92/046,185. Grimes attorney Michael Patrick has previously written about this issue in an article titled
The Disparaging Trademark Dilemma: Reality after Harjo v. Pro Football, Inc. (IP Litigator, January/02 2006).

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