Redskins: Impact and fallout

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Reg. Number 0986668

Reg. Number 0986668

As many have heard, the USPTO canceled many of the Washington Redskins’ federal trademarks.  Below, I’ve reposted a good article from fellow Vermonters that lays out the history, the case, and the decision of the USPTO.  I’d also suggest reviewing these two articles:

Prof. McKenna at Patentlyo

Randazza at CNN

In all, these three posts lay out what exactly the Redskins lost, why they lost it, and what the implications are.  To summarize: while the Redskins organization is undoubtedly disappointed the impact of the loss is not extremely significant. The greater impact may be on what role the disparagement limitation to federal registration takes in future challenges to clearly established marks.

[This post was republished from the WebTM blog with the permission of my colleagues, Gordon Troy and Lawrence Stanley]

REDSKINS Marks Cancelled, Found to Disparage Native Americans

On June 18th, the United States Trademark Trial and Appeal Board (TTAB) granted a petition to cancel six registrations for word and design marks containing the word, REDSKINS for entertainment services. The action, Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tsotigh v. Pro-Football, Inc., Cancellation No. 92046185 (June 18, 2014) (“Blackhorse”), was brought by six Native Americans (later narrowed to five), who argued that the word “Redskin” was disparaging to Native Americans. Two of the three judges on the TTAB panel agreed and one dissented.

This was the second cancellation action brought by Native Americans against trademarks owned by the Washington Redskins. In the first, Harjo v. Pro Football, Inc., brought in 1992, the TTAB granted the petition for cancellation, but the federal courts ruled that the petitioners were barred by the doctrine of laches — i.e., they had waited too long after reaching the age of majority to file their action.

The registrations sought to be cancelled in Blackhorse were registered between 1974 and 1990. When the petition was filed in 2006 (shortly after the federal courts dismissed the Harjo petition), each of the petitioners had only recently reached the age of majority. Laches was no longer at issue.

Under 15 USC § 1052 of the Lanham Act, marks that “may disparage” persons or institutions “or bring them into into contempt or disrepute” are forbidden from being registered. Moreover, while the Lanham Act requires many cancellation petitions to be brought within five years of registration of the disputed mark, it provides no statute of limitation for cancellation petitions based on disparagement. Under 15 U.S.C. § 1064(3), such petitions may be brought “[a]t any time.” In the final Harjo appeal, Pro-Football, Inc. v. Harjo, 415 F.3d 44 (2005),the Court speculated that Congress “may well have denied companies the benefit of a statute of limitations for potentially disparaging trademarks for the very purpose of discouraging the use of such marks,” citing In re Riverbank Canning Co., 25 C.C.P.A. 1028, 95 F.2d 327, 329 (1938), which noted that the “field is almost limitless from which to select words for use as trademarks, and one who uses debatable marks does so at the peril that his mark may not be entitled to registration.”

Nevertheless, there was no fixed test for determining whether a mark is disparaging until Harjo. As re-stated inBlackhorse, the test is two-fold:

  1. What is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations?
  2. Is the meaning of the marks one that may disparage Native Americans?

In answer to the first question, the TTAB found that REDSKINS, even when used in connection with the presentation of football games, clearly refers to Native Americans. This is demonstrated by the design marks (visible on Washington Redskins helmets and elsewhere) and by the use of Native American garb and headdresses by the Washington Redskins’ band and cheerleaders (called “Redskinettes”).

In answering the second question, the TTAB noted that in addition to other evidence, it must take into account the views of a “substantial composite,” but not necessarily a majority, of the group which the mark is claimed to disparage. In addition, it had to find that REDSKINS was disparaging in connection with entertainment services (i.e., the presentation of football games) at the time the marks were registered.

Petitioners submitted two types of evidence to prove their case. General evidence as to the meaning of the word REDSKINS consisted of dictionary definitions, reference books and testimony from experts in linquistics. Specific evidence as to the views of Native Americans consisted of personal testimony and letters, newspaper articles and official records, including a 1993 Resolution of the National Congress of American Indians declaring that the REDSKINS trademarks were “offensive and disparaging.” The evidence left no doubt in the minds of the majority that REDSKINS was disparaging at the time the marks were filed. The respondent’s argument, that REDSKINS had acquired a separate meaning as the name of a football team, thereby neutralizing any disparaging effect, was rejected.

The dissent, on the other hand, believed that the petitioners failed to prove that the term was disparaging at the time of registration when used in connection with football. Furthermore, he said, dictionary definitions that labelled REDSKIN as “usually offensive” left open the possibility that it might not be in certain contexts, one of which could be football.

The TTAB ruling does not affect the ability of the Washington Redskins owner to continue using its REDSKINS trademarks. The only issue at stake in the case was whether federal law permitted registration of the mark in the US Patent and Trademark Office, thereby invoking the additional protections that registration provides. There is no question but that the USPTO made the right decision. Indeed, no federal agency should put a stamp of approval on conduct (or a trademark) that plainly disparages a segment of the population on the basis of race, religion, ethnicity, gender or sexual orientation.

Johnny Manziel – On the ball both on the field and off.

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Infringing on Johnny Manzel's unregistered mark?

Infringing on Johnny Manziel’s unregistered mark?

Johnny Manziel – Texan A&M football phenom quarterback and Heisman trophy winner – took a t-shirt salesman to court last week to protect his trademark rights to JOHNNY FOOTBALL.

As reported by ESPN, Eric Vaughan was (and apparently still is) selling T-shirts that read “Keep Calm and Johnny Football.”  Although the case would be fairly vanilla if Manziel owned the registered mark, Manziel’s mark is still in process with the USPTO. So how can he still sue to stop Vaughan? The answer: common law rights.

Common law rights to a mark automatically attach once the mark is used in commerce, giving the user territorial priority trademark rights even without requiring a certain level of notoriety (not really the case here as most sports fans throughout the country know who Johnny Football is). This earlier use establishes a right of priority even over a earlier filed U.S. application to register a similar mark (assuming no earlier use by that applicant) and as a corollary, allows the prior user to prevent the subsequent user from using the similar mark (with certain exceptions).

Johnny’s right to sue Vaughan is also codified in 15 U.S.C. §1125(a) (Lanham Act §43(a) which allows for suits against people who use “in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which–(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person…”

Thus, Johnny is in good shape.