"The Redskins Just Had Their Trademark Canceled. Here’s What Happens Next."
The U.S. Patent and Trademark Office on Wednesday canceled six trademark registrations for the Washington Redskins on grounds that the name is “disparaging to Native Americans.” As such, the name violates a federal law that prohibits trademark protections for terms or images that may be derogatory or offensive.
The ruling from the PTO’s Trademark Trial and Appeal Board was expected within circles of the movement against the Redskins’ name — it largely echoes a similar ruling the Board issued in 1999 against the team that was later overturned on appeal. Activists began targeting the trademark in 1992 as part of a wider campaign to change the name, and this was another preliminary victory in that fight. As such, members of Congress and activists who have fought the name celebrated the decision widely and again began clamoring for a change.
The team, meanwhile, maintained both through its president and general manager — “We’re fine,” Bruce Allen said afterward — and its lawyer that the decision wasn’t a big deal.
There is some confusion about what exactly this case means for the name and for the team that holds it — whether it will spark an immediate change, whether it will cost the team enough money to force a change, or whether it will have little tangible effect at all. We spoke to trademark experts in an effort to clarify what the decision means going forward, and what will happen next in the case to either end the use of “Redskins” or save it.
Does this mean the name has to change?
No. The U.S. PTO issued a fact sheet after the ruling that made two things clear. First, the Board does not have the jurisdiction to stop businesses from using any mark it has invalidated, so the ruling by no means compels the team to change its name. Second, all of the Board’s decisions are subject to review in federal court, and no canceled trademark is taken off the books until after such a review is complete.
“Of course we will appeal,” Bob Raskopf, the team’s lawyer, said in a statement. And because Board decisions are not final until appeals are complete, the team will keep its trademark protections throughout the appeals process. That will likely take a significant amount of time. In the previous case, the Board decision came in 1999, the initial appeal finished in 2003, and the case didn’t die until the Supreme Court decided not to hear it it in 2009. This won’t be decided any time soon, so any effect this could have on forcing a name change likely won’t materialize any time soon either.
Is this a form of government overreach by the Obama administration?
Well, no. President Obama is on record saying he would consider a name change if he owned the team, and Democratic members of the Senate and House of Representatives have been the foremost critics of the name in Congress. That has helped conservatives and people who defend the name paint this decision as a massive government overreach into the affairs of a private business, or the policing of speech of some sort. But that’s not the case.
For one, members of the Trademark Trial and Appeals Board aren’t appointed by the president, and even if they were, none of the three in question were appointed during the Obama administration. Karen Kuhlke, the examining attorney who wrote the majority opinion, joined the Board in 2005. Peter W. Cataldo, who joined the majority opinion, and Marc A. Bergsman, who authored the dissent, both joined in 2006.
Second, while it might be easy to see this as the government stepping into the issue, that isn’t what happened. The government’s action in this instance was agreeing to provide federal protections to the team’s trademark. It isn’t trying to force a change, it isn’t trying to police language, and it isn’t telling anyone they can or cannot use the word “Redskins” in the name of their business. None of that falls within the scope of the Board’s authority. All the U.S. PTO is saying is that, under existing federal law, the government will not provide protections to the trademark.
What will the team argue on appeal?
In the original case, brought by Native American activist Suzan Shown Harjo, the team won its appeal in part because of what is known as a laches defense. Laches is essentially a statute of limitations, and a district judge ruled that the plaintiffs in the case had waited too long to bring their complaint against the trademark. The plaintiffs in this case, brought by Amanda Blackhorse and other Native Americans, are younger, and their attorneys and advocates have long believed that would preclude any such argument on that point. The Board agreed in its ruling.
So what will the team argue? According to Christine Haight Farley, a law professor specializing in trademark law at American University’s Washington School of Law, the team will likely focus on the plaintiffs’ ability to prove that a substantial number of Native Americans felt offended by the name between the time the first trademark in question was issued in 1967 and the last issuance in 1990.
That was a major point raised by examining attorney Marc A. Bergsman in his dissenting opinion, which highlights that “this case is not about…whether the term ‘redskins’…is disparaging to Native Americans today,” but whether the plaintiffs have provided sufficient evidence that “establishes that the term ‘redskins’ was disparaging” to a substantial number of Native Americans when each trademark was issued. Bergsman was not convinced that they did.
Bergsman highlights issues with verifying the membership of the National Congress of American Indians, which passed a resolution condemning the name that was used as evidence in the case, and says that the plaintiffs “did not submit any evidence regarding the Native American population during the relevant time frame, nor did they introduce any evidence or argument as to what comprises a substantial composite of that population.”
That was also an issue in the overturning of the Harjo case, and Bergsman wrote that much of the evidence submitted was identical to the evidence in that case. Though the NFL declined to issue a statement on top of what the team’s attorney said, a league spokesperson pointed to those segments of Bergsman’s dissenting opinion in an email, and the team itself, in Rakopf’s statement, indicated that its belief is that this case is no different from the last one. All of that suggests these issues will be central factors in an appeal, and Farley believed that to be the case as well.
Whether it will work is unclear. Bergsman lays out an interesting argument that the plaintiffs need more evidence proving their case. But Farley, who filed an amicus brief asking the Supreme Court to hear the Harjo case but said she has not worked on it otherwise, suggested that meeting the standard of proof the team (and Bergsman) wants would be “impossible” to do.
“It means that you need to show us that enough Native Americans between the years 1967 and 1990 found the mark…in the context of our use to be disparaging,” Farley said. “Unless Amanda Blackhorse has a time machine, that is an impossible thing to prove. So then the question is whether they got close enough.”
Farley argued that judges in cases like these often approximate evidence to determine whether enough people felt disparaged, and she pointed to the fact that requiring more evidence than the plaintiffs presented could put an undue burden on the public in other cases that are more about public interest than about consumer or competitive business rights.
“This is not a case between two commercial entities that have a financial stake,” she said. “This is a case and a cause of action available to members of the public to take it upon themselves to come forward and say, ‘Hey, Trademark Office, you made a mistake and I want to point it out and I want you to correct it.’ Those parties are never going to have the wherewithal to do a better job than these parties have done today. They’re never going to produce a more comprehensive case than Amanda Blackhorse, et al. have presented in this case.”
This will almost certainly be a key point in the appeal, so it’s worth watching as it goes forward.
Can anyone start making Redskins-branded merchandise and selling it to the public without retribution?
Not quite. Again, the team will maintain its trademark protections until the appeals process has concluded, and that will likely take years.
What if the team loses the appeal? Will they be protected?
No matter what happens, the team will definitely have trademark protections at the state level, where states have their own laws governing infringement. That might create a headache for the team as it tries to both police infringing activity and prove cases under different laws, but they will at least have a measure of protection.
Most experts seem to believe that the team will also have common law trademark protections, which are established as soon as a product is sold under a specific brand name and are especially strong when a product becomes deeply associated with a particular brand name (like pro football in Washington and “Redskins”). While federal trademark registration establishes a statutory presumption of protection and ownership, common law protections can usually exist without it.
Anderson Duff, an associate attorney who specializes in trademark and copyright law for Wolf Greenfield in Boston, believes it is likely that the team will maintain its common law protections, largely because the “Redskins” brand has existed for so long and is so easily identified by so many consumers.
But there are reasons to think the common law question is not quite settled. Duff pointed to a recent case involving common law trademark in New Jersey. In that case, Union County, New Jersey attempted to keep a television reporter from using its county seal during broadcasts. The county’s argument was, in effect, that it had a common law protection over that seal. But the court ruled that it had no such protection, because Section 2(b) of the Lanham Act, which lays out federal trademark law, bars trademarking of the “flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.” Because the mark in question wasn’t eligible for trademark, the court ruled, it had no common law trademark protection (here is a deeper explanation of that case).
That is potentially significant because it is Section 2(a) of the Lanham Act that prohibits the trademarking of offensive or disparaging terms and is relevant to the case in question. So there is legal precedent, both Duff and Farley said, that could open the door to a simple argument from anyone the team sues for violating its common law trademark protection: that there is no such thing as common law trademark protection for a term that isn’t eligible for federal trademark registration.
“It’s a novel argument, it’s something that hasn’t really been considered” outside of the New Jersey case, Duff said. “For the most part, trademark law professionals are assuming that the Redskins are going to retain their common law rights. But this case at least casts doubt on whether (the team) will retain common law rights to ‘Redskins.’ It’s at least an argument that anybody they sue could raise. And it’s an argument that would probably have to be litigated.”
That could result in massive legal fees alone if the group that makes knock-off apparel has the resources to fight the team, and it would also present the risk of losing common law as a defense, potentially costing the team even more.
“There’s the risk that in litigating that issue, they would lose,” Duff said. “And if that happens, then they don’t even have common law rights to hang over people’s head. So they might not want to litigate it.”
Farley raised similar issues but went even farther, saying she held a minority opinion that the team might not even have common law protections. And, like Duff, she suggested that if those protections do exist, the potential of losing them in a litigation could keep the team from actually going to court to enforce them.
“I guess I have a little bit of a minority view. I really question whether (the team) has the ability to go to federal court and enforce their rights, and I even more strongly question whether they would be so stupid as to try to do that. This is a little bit of a grey area, but there is some precedent, and I think it’s at least likely that a federal court judge would say, ‘We are not going to enforce this common law right in a mark that the trademark office has deemed un-registerable under the federal trademark act as being disparaging to Native Americans,” Farley said, referencing the New Jersey case. “The risk of a district court doing that would far outweigh the benefit of enforcing your trademark against any infringer. So I wouldn’t be surprised if (the team) sent lots of angry cease-and-desist letters citing common law marks, but I’d actually be surprised if they’d go to court for that reason.”
So could this cost the team a substantial sum of money that will speed up a name change?
One of the major reasons activists have targeted the trademark is a belief that the government should not sanction disparaging terminology. The other is strategic: erasing the team’s trademark protections, they reason, could open the floodgates to illicit merchandise that costs the team large amounts of money. Because of the NFL’s revenue sharing model, this would also likely cost other owners money too, and that, in theory, would create an atmosphere for change.
Whether that is actually true depends heavily on the common law question.
“Really, there probably won’t be that significant of a hit to them” if the common law protections exist, Duff said. “I honestly don’t see there being that huge of a problem.”
Relying on common law and state-level protections could create an Albert Haynesworth-sized headache that could get expensive, but it probably wouldn’t cause the levels of pain that could force a change.
But Farley pointed to other aspects where this could cause financial losses for the team even if its common law protections exist. There are major benefits to having federal protections, she said, and both the team and many who are saying this is not a big deal are understating those benefits. One of those is that a firm without federal protections is a much less attractive investment. The other — and more important in this context — is that federal trademark registration is a requirement for protections from U.S. Customs enforcement.
“What is very important in sports merchandising is stopping counterfeits. One of the most important ways you stop counterfeits is by filing your trademark registration with the Customs agency, and because that trademark registration is on file, Customs has the ability and the power to halt infringing merchandise at the border, and that merchandise never gets into the country,” Farley said. “So even if what they say about common law rights is true, they lose, for instance, that benefit.”
“When you’re talking about (the team), which makes a ton of money…off of clothing and other things like that that they license their marks for, those can be made abroad very, very cheaply,” Duff said of the loss of Customs protections. “So I think there is the potential for a huge influx of infringing goods.”
Common law and state-level protections may keep the damage from being too large, but it is still likely that there would be at least some level of monetary loss from the absence of federal protections.
If there is no substantial financial loss, what would be the impact of losing trademark protections?
Put simply, it is a public relations nightmare.
“For an NFL team, this is of mostly symbolic importance, but it’s consistent with a growing public sentiment against the Redskins mark,” University of Notre Dame law professor Mark P. McKenna, who specializes in intellectual property, trademark, and copyright law, said in an email statement.
Both Duff and Farley agreed that the amount of press and public attention the case and the Board’s ruling have gotten suggests it could have a major symbolic effect on the controversy around the team’s name, and the timing of the ruling could only exacerbate that.
Even absent financial issues, the loss of a federal trademark — and even the rejection of it solely at the Trademark Trial and Appeal Board level — could operate as a rebuke from the federal government. Given the events around that decision, that could matter from a perception standpoint. A majority of the United States Senate is already on record opposing the name. The president has spoken out against it. So too have the Minority Leader of the House of Representatives and both co-chairs of the Congressional Native American Caucus. Civil rights and religious groups have come out against it, as have a litany of media figures and NFL reporters and even high-profile current and former players.
The ruling also puts the team and its owner, Daniel Snyder, in the position of appealing a case in which their name has been officially ruled disparaging, which won’t do anything to help the public perception of the team’s standing on this issue. At a time when Native American activists and their allies have pledged to make this a “permanent campaign” against the name, that sort of rebuke will only increase opposition and could certainly end up being another (major) crack in the wall of defense for this name. And given that those cracks are becoming bigger and more common, it isn’t hard to imagine a point where more players and even owners decide that all of this is too much, that at some point more people in places that matter will grow tired of fighting the same battle and getting only more and more criticism out of it.
That is Farley’s belief, and it’s a thought people close to this fight express too.
“I think there are only two choices: change the name now…or dig into litigation and expect another decade of litigation. I don’t think it’s an option to say, that’s fine, we’re content with our common law rights,” Farley said. “This is, after a very lengthy consideration, a trademark office, after hearing all the criticisms from their prior decision, having another go at it and coming out the very same way,” Farley said, adding that the team’s statement understated the symbolic effect of the ruling. “And in the meantime there have been many politicians, many sportscasters, many members of the public, who have also reached the same decision.”
“I think it’s another nail in the coffin of this name,” she said.
This post was updated to clarify one claim about the team’s potential reliance on state and common laws.