ON THE MARK Trademark News and Views

Sports, Trademarks
Oct 11, 2013

HEADLINE: Should Washington Redskins Keep Their ®?

What’s The News?

What’s The Law?

  • The Lanham Act (the federal trademark statute) prohibits registration for any term or symbol that “may disparage persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”  15 U.S.C. §1052(a).
  • Two part test:
    • What is the likely meaning of the term in the context of its use? Does it refer to a group?
    • Is that meaning disparaging to a substantial percentage of the group?
    • Examples:  SQUAW found disparaging to Native American woman as a mark for clothing; but not disparaging as a mark for ski equipment because of allusion to Squaw Valley resort.

What Are The Issues?

  • Whose views are relevant?  Just Native Americans? Football fans? The Public at large?
  • When should “disparagement” be measured from?  From the time of the registrations?  Now?
  • Have those seeking cancellation waited too long?

What’s Happened So Far?

  • 1992—seven Native Americans petitioned the Trademark Trial and Appeal Board to cancel the Redskins registration.  Suzan Shown Harjo et al. v. Pro-Football, Inc.
    • The TTAB granted their petition
    • Pro Football appealed
    • The D.C. Federal Courts ruled that the petitioners had waited too long before complaining about the registration
  • 2006 to present—another group of younger Native Americans have filed a new cancellation petition, which is pending at the TTAB  Blackhorse v. Pro-Football Inc. 

What’s At Stake?

  • The Redskins’ Federal Trademark registration and the benefits it confers
    • Legal presumption of ownership
    • Right to block imports of counterfeits
    • Right to use ®
  • Prestige of the brand, valued at over $1 billion
  • BUT, cancellation of registration would not force Washington to drop Redskins name

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