For more than 20 years, there has been a movement to erase nicknames and mascots that refer to Native Americans for athletic teams at all levels of competition. Many teams have voluntarily changed their name and mascot such as: Miami University RedHawks (formerly Redskins until 1996); Marquette University Golden Eagles (formerly Warriors until 1994); St. John’s University Red Storm (formerly Redmen until 1994); University of North Dakota (currently no team name, retired Fighting Sioux in 2012). Other teams have discontinued using any Native American images in their logos. These teams include: University of Illinois Fighting Illini (no longer uses the “Chief Illiniwek” mascot), Cleveland Indians (replaced “Chief Wahoo” logo with a block “C” on their hats), and the Golden State Warriors (eliminated native american imagery in their logos, instead using an image of the Golden Gate Bridge). Recently, tension is rising on the NFL’s Washington Redskins to change their name by various members of the Native American community, the public, several members of the US Senate, as well as the President.
On June 18, the Trademark Trial and Appeal Board (TTAB), an independent administrative tribunal within the United States Patent and Trademark Office (USPTO), canceled six federal trademark registrations that were owned by the Redskins. The TTAB is responsible for hearing and deciding issues that arise in federal trademark registrations and applications. The TTAB does not hear trademark infringement cases. They only have the power to determine and rule on the registrability of a trademark. If a trademark is disparaging to a group of people, that trademark is not granted federal trademark protection.
A two step test is used to determine whether a trademark is disparaging. First, would the trademark be understood, in its context, as referring to an identifiable group of people. Second, may that reference be perceived as disparaging to a substantial composite of that group. Evidence to prove these elements may consist of a dictionary definition of the terms used in the mark, the relationship of the term and other elements in the mark, the type of product or service which the mark appears, and how the mark is used in the public marketplace.
In the Washington Redskins’ case, the TTAB ruled that, by a preponderance of the evidence, the term “Redskins” was disparaging of Native Americans when it is used in relation to professional football services. If the Washington Redskins decide not to appeal this ruling, or they do appeal and the decision is affirmed, they will lose the legal protections and benefits conferred by a federal trademark registration. This includes: a legal presumption of ownership of the registered mark throughout the nation; priority rights to protect the registered mark against any infringing mark throughout the nation; ability to use the ® symbol; and the ability to sue in federal court on any infringing trademarks.
What this ruling does not mean is that the team does not have to change their name, the team does not have to stop using the “Redskins” trademarks that have been cancelled in this ruling, the team does not lose all legal protections in the trademark as their may be remedies available at state law and common law which provide legal rights in use alone.
This is not the first time this has happened to the Redskins organization. In 1999, the TTAB canceled a Redskins trademark under the same “disparaging” theory. The US Court of Appeals for the District of Columbia reversed that ruling on the legal defense of latches, which in non-legal terms means that the plaintiff waited too long to bring the suit when he had the necessary elements to satisfy a valid legal claim.
Unless public pressure changes owner Dan Snyder’s mind, expect that the team will take this recent ruling to the federal courts.