On Wednesday, the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office (“PTO”) cancelled six trademark registrations of D.C.’s beloved football team, the Washington Redskins, finding the term “Redskins” included in these trademarks disparaging to Native Americans. The proceeding before the TTAB was Blackhorse v. Pro-Football, Inc., and the ruling, which can be found here, is a major milestone in a debate that has been ongoing for decades.

In the Blackhorse decision, the TTAB first addressed the registrations themselves and a prior Petition for Cancellation that had come before the TTAB regarding these same registrations in 1992. As the ruling noted, the Washington Redskins first gained registration of the mark “the Redskins” in 1967. Following this, the team gained five other registrations for marks also including the Redskins team name between 1974 and 1990. In 1992, a group of Native American petitioners led by activist Suzan Shown Harjo petitioned the TTAB for cancellation of these registrations. The cancellation proceeding, Harjo v. Pro-Football, Inc., was brought on the grounds that the term “Redskins” is disparaging to Native Americans. Though the Harjo petitioners triumphed over the Washington team in this proceeding, this TTAB decision was later overturned by a federal judge for two reasons. First, the court ruled that petitioners brought suit too late, and therefore their claim was barred by laches. Second, the court ruled that the petitioners lacked sufficient evidence that the term “Redskins” was disparaging to Native Americans at the times of registration of the Redskins marks.

The Blackhorse petition sought to address the technical failings of the Harjo petitioners. Because the Blackhorse petitioners have only recently reached the age of majority, they argued that laches had not run against them. Further, the Blackhorse petitioners produced evidence that the term “Redskins” is disparaging to the current petitioners and was disparaging to Native Americans at the times of registrations of the Redskins marks. Parties in Blackhorse agreed that the entire record in Harjo could be submitted into evidence in the current case, subject only to any objections as to the relevance of such evidence in the current case.

The crux of the TTAB decision in Blackhorse centered on one question: Was the meaning of the marks at the times of registration one that may have disparaged a “substantial composite” of Native Americans? In deciding that the answer to this question is yes, the TTAB focused on testimony and reports from the parties’ experts, current and previous dictionary definitions, reference books, the deposition of the Executive Director of the National Congress of American Indians (“NCAI”), various newspaper articles, and official records and letters.

Considering all of this evidence, the TTAB ruled that while the record showed that there were differing opinions within the Native American community as to whether the term “Redskins” is and was disparaging, a substantial composite of Native Americans found the term disparaging at the times of registration. In so finding, the TTAB relied (seemingly heavily) on a Resolution passed by the NCAI in 1993 in support of cancellation of the Redskins registrations. The Resolution states that the term Redskins “has always been and continues to be…[a] disparaging and racist designation” for Native Americans. Because the TTAB found that the NCAI represents approximately 30% of Native Americans throughout the relevant time period, the Board ruled that a substantial composite of Native Americans at the times of registration of the Redskins marks found the term “Redskins” disparaging. Interestingly, the TTAB further ruled that the defense of laches did not apply in this case, stating that “laches is an equitable defense…[and it] is difficult to justify balancing the equities where a registrant’s financial interest is weighed against human dignity.”

The three-judge panel presiding over the Blackhorse proceeding was not unanimous in their decision, however. One of the three-judge panel disagreed with the Blackhorse decision. In his dissent, Administrative Trademark Judge Marc Bergsman criticized the decision’s heavy reliance on evidence found in the Harjo record, calling the evidence submitted by the Blackhorse petitioners “a database dump” and stating that petitioners did not substantially augment the evidence from the Harjo record. Further, Bergman opined that the NCAI Resolution and related evidence did not support a finding that the NCAI represented 30% of Native Americans throughout the relevant time period and that the evidence overall did not support a finding that a substantial composite of Native Americans found the term “Redskins” disparaging at the times of registration.

The Washington Redskins have already announced that they will appeal the TTAB cancellation of their trademark registrations. It is possible that the team will appeal based on some of the arguments made in Bergman’s dissent. While an appeal is pending, the TTAB ruling will have no effect on the team’s trademark registrations. The team’s owner, Dan Snyder, has insisted in the past that, regardless of an eventual loss of trademark registration, the team will not change its name. If the team loses on appeal and its trademark registrations are cancelled, it would not be prohibited from continuing to use its name – it would simply lose the benefits afforded by federal registration. This would make enforcement of its trademark rights more cumbersome, but may not be enough to force a name-change. So, for the “Washington Redskins,” the game continues.

By Ankhi Lindemyer, A Guest Blogger for Dunner Law PLLC