The Washington Redskins Trademark Controversy - Part II

In part I, this author briefly discussed the recent decision by District Court Judge Gerald Lee (E.D. Va.) that independently agreed (under the statute's de novo review required by a district court) with the USPTO's Trademark Trial and Appeal Board's (TTAB) decision to cancel six registered trademarks for the NFL's Washington Redskin franchise.  In that entry, this author stated disagreement with both recent opinions, but without much analysis, saving the beginning of that discussion for this and future entries. As mentioned in the previous post, and although pilfered from John Adams and the Massachusetts Constitution (1780) and oft-applied to the Union that soon followed (1787), if this republic is a government of laws and not of men, and if the consent of the governed demands clearly written and applied laws and not the unpredictable will of the few, then these recent trademark decisions are but two of a growing list of decisions (and laws) violating these bedrock principles. 

To be clear, Judge Lee clarified certain issues that have been incorrectly conflated with the issues in this case (and the legacy case of Harjo).  For example, Judge Lee made it clear that it is the trademark registrations and not the trademarks that are at issue.  Rather, the statutory provision asserted (15 USC Sect. 1052(a) - "Sect. 2(a)") only allows for cancellation of the registration, not prohibition of use in commerce.  Neither the TTAB nor the District Court (in this instance) can prohibit the use of the marks despite any cancellation that may transpire.

Moreover, Judge Lee correctly pointed out (to anyone understanding and paying attention) that not only can the NFL franchise continue to use the marks in commerce despite any cancellation(s), the Lanham (trademark) Act allows a party to sue for infringement of its unregistered trademarks (15 USC Sect. 1125(a) - "Sect. 43(a)").  Therefore, despite the political and legal hand-wringing that continues over this matter, any speculated termination of the Washington Redskins trademarks is premature and highly exaggerated.

Now for the substance of Judge Lee's decision; as a preliminary matter, I am reserving comment on the constitutional questions for a future time.  IMO, the constitutional arguments are nuanced and deserving of considerable thought before comment.  Nor will I address the laches (unreasonable delay in pursuing suit) issue at this time.

Judge Lee's order was based on motions for (and opposing) summary judgment, which requires that there be no genuine issue of material fact and the movant is entitled to judgment as a matter of law (e.g., Fed. R. Civ. Pro. 56(a)).  IMO, this is problematic for several reasons.  First, to the question of whether a particular trademark has disparaging capabilities to a group of individuals, the USPTO asks: (1) is the mark understood as referring to an identifiable group of people? and (2) may that reference be perceived as disparaging to a substantial representation of that group?  Judge Lee answers:

[. . .] the record evidence shows that the term "redskin" in the context of Native Americans and during the relevant time period, was offensive and one that "may disparage" a substantial composite of Native Americans, "no matter what the goods or services with which the mark is used." [citation omitted]  p. 63

Despite their respective decisions, neither the TTAB nor Judge Lee seem to properly analyze question (1), both relying heavily on dictionary definitions to define "redskin" as an offensive term used in connection to Native Americans to skip ahead to question (2).  Yet question (1) is a threshold question - and if the mark is not understood as referring to an identifiable group of people, a tribunal does not reach question (2).

This is where the marks are of considerable importance.  While each of the six marks uses "redskins" in some manner, the usage is critical to answering question (1).  The six marks include:  a stylized (script) "The Redskins", the stylized "The Redskins" + arrow + Indian profile, non-stylized "Redskins", "Redskinettes", the word mark "Washington Redskins", and the word mark "Washington Redskins" + Indian profile.

It is highly arguable that any of the marks are understood to identify a group of people, since all of these marks are predominantly (if not exclusively) used in association with the NFL franchise and not as a pejorative against Native Americans.  "Redskinettes" and the two marks using "Washington Redskins" are particularly difficult to associate with a group/race of people when considered in context of commercial use.

As used, "Redskinettes" is a mark associated with the female cheerleaders of the football franchise, a term presumptively coined by the franchise and used only by the franchise in this association.  There does not appear to be any evidence that the term "Redskinette" is plausibly understood to refer to Native Americans.  It is doubtful that anything above a statistically insignificant number of Americans would understand this term to mean anything other than in connection with an athletic team nickname (although not necessarily the nickname itself).

Likewise, when used, the two marks utilizing "Washington Redskins" are clearly referring to the NFL franchise located near Washington, D.C., and not a group of Native Americans.  These marks are so identifiable with the NFL franchise that the experts used by the complainants could find scant-little instances of recorded usage of the term "redskin" as a pejorative after 1969 (with 143,000+ articles making at least one "redskin" reference, with the overwhelming majority of these references to the Washington D.C. pro football franchise).

Illogically, the TTAB majority noted that the extreme drop-off in usage of "redskin" as a derogatory term was evidence of the derogatory and disparaging nature of the term; in many circles, this is considered a logical fallacy (as evidence of absence and a false dichotomy).  One could more plausibly conclude that the drop-off in the use of "redskins" in a derogatory manner (compared to the number of actual media uses) is evidence of the strong association between the term and the NFL franchise.

Accordingly, it is reasonable to suggest that Judge Lee put the cart before the horse by divorcing the actual context of the marks as used and labeling the "context" of these marks as being understood to refer to Native Americans.  In part III, additional aspects of this decision will be examined.

The Washington Redskins Trademark Controversy - Part I

Given the recent controversies over the Confederate Flag in South Carolina, as well as the recent SCOTUS decision regarding Confederate Veterans and license plates in Texas, and the alleged implications of these outcomes on the Washington Redskins trademark controversy, I've been building toward a post on the subject.  However, before I could get there, Federal District Court Judge Gerald Lee affirmed the decision of the US Patent and Trademark Office (USPTO) and its Trademark Trial and Appeal Board's (TTAB) decision to cancel six of the trademark registrations the franchise possesses for "Washington Redskins".  So, the time is right for some analysis and critical comment on this very recent decision and the related decision(s) and commentary that have come before. As one might expect, this will be a multi-part post, as one entry will simply not be sufficient to cover all the ground necessary to explain why, in the opinion this author, the USPTO and the Federal Courts have got it wrong so far.  If this is a nation of laws (as is said), then both the TTAB and the Federal Court for the Eastern District of Virginia (E.D. Va.) (and Judge Lee) have ignored that principle because trademark law and judicial precedent say one thing on the standard to apply while these tribunals have misstated, misapplied, and wrongly analyzed the law and doctrine at issue.

Moreover, and as a threshold gripe, the reporting on this matter continues to miss the mark.  Like the TTAB and federal court(s), the news agencies misstate or simply miss the real, relevant issues in analyzing a cancellation proceeding for alleged disparaging marks.  Rather than focus on the appropriate legal standard, the news (and the tribunals), have focused on the term "Redskins" completely devoid of the use of the term in commerce, which is required.  Moreover, to cancel such a mark, significant evidence must be marshaled that shows a substantial composite of the group allegedly disparaged finds the term disparaging.  As was the case in the original Washington Redskins trademark row (Harjo), which took more than 13 years to resolve (in favor of the NFL franchise), there simply is not significant evidence of such disparagement.  Yet, the tribunals have lurched and groped to find "evidence" deemed sufficient to cancel the marks.

In addition, the news reports have been inadequate in describing what will result even in the unlikely event Washington's marks are cancelled.  For example, the Washington Post asserts that the franchise would still have state law rights in the trademarks - but that is not only an incomplete answer, but an answer/option that if far less valuable for the franchise.  Although state law may provide some protection(s), the franchise will still have very valuable rights under the federal trademark statute - the Lanham Act.

Unlike patents and copyrights, trademarks do not derive value and become a legally protectable asset until the mark(s) is/are used in commerce.  For federal protection via the Lanham Act, that use must be in interstate commerce.  However, federal protection is not contingent upon registration; rather, the Lanham Act protects unregistered trademarks as well (under Sect. 43(a) of the act - 15 USC Sect. 1125).

Some commentators have questioned whether a mark previously registered and then cancelled because of offensiveness or disparagement would then enjoy trademark protection under the unregistered provision of the Lanham Act.  It is an interesting question, and there is no substantive precedent in this area, so it would be a case of first impression with any court that is forced to set over this matter.  This, and other issues, will be reserved for subsequent parts to follow.

In part 2, the next entry will explore my reason and rationale for finding the TTAB and federal court decisions in error.