This is an update from the blog we did in 2016.
Federal Court Decision May Shore Up Redskins’ Trademark Rights
Is the name used by the NFL’s Washington Redskins offensive? That question was at the heart of an on-going court battle between members of the Native American community and the team’s owners. A court decision at the end of 2015 favored the team’s ability to keep their Redskins trademark rights, while the plaintiffs continued their fight against registration of the mark, it was social pressure that made the biggest change.
The Initial Case
The first legal action against registration of the Redskins’ trademarks came in 1992 when Suzan Harjo and other Native Americans attempted to cancel the registrations by petitioning the U.S. Patent and Trademark Office. At the heart of their claim was the Lanham Act, one of the foundations of U.S. trademark law, which says that any trademarks that are “disparaging, scandalous, contemptuous, or disreputable” cannot be legally registered. It took seven years, but the USPTO eventually agreed with Harjo, cancelling registration of the Redskins’ trademarks. Team owners appealed the decision in court, winning on the grounds that there was insufficient evidence of disparagement. Further appeals followed, but Harjo and the other plaintiffs were unable to win, with courts saying they had waited too far beyond their 18th birthdays to file suit.
Amanda Blackhorse and other plaintiffs filed their own cancellation action in 2006. This group of plaintiffs was younger, giving them an advantage over the previous efforts. Initially, the new lawsuit appeared to pay off.
A group of 50 U.S. Senators signed a letter to the NFL asking for the Redskins to change their name. The Redskins also lost a ruling by the Trademark Trial and Appeal Board that said the name was disparaging to a “substantial composite of Native Americans.” Washington would appeal the decision, which was overruled by the Supreme Court in 2017.
In July of 2015, a federal court ordered the USPTO to cancel six trademark registrations of the Redskins mark. The judge made it clear that the team can still use the mark, but that federal registration of the mark is not legal because it could be seen as disparaging or offensive.
The December ruling turned matters around in favor of the team’s ownership. The Washington D.C. District Court decided that the Lanham Act’s prohibition against disparaging marks might constitute viewpoint discrimination, which would violate the First Amendment rights of citizens. This decision was not actually rendered in connection with the Redskins’ lawsuit. Instead, it originated in the legal efforts of an Oregon rock band that calls itself The Slants.
Weeks of social pressures and renewed pressure from investors including FedEx, Nike, and PepsiCo eventually led team management to conduct a “thorough review” of the name. It was not long after this that the team removed Redskins as the name.
A Similar Case (The Slants)
The Slants, four Asian-American men, attempted to gain a federal trademark registration of their name, but the USPTO refused on the grounds that the name might be considered disparaging. Undaunted, and with the assistance of a trademark attorney, the young men continued to pursue their rights for trademark registration. Those efforts finally appear to be paying off, and the victory for The Slants may translate into victory for the owners of the Redskins trademark.
Obtaining federal registration of a trademark is not always a straightforward process. Frequently, it is necessary to engage in nuanced legal arguments before the USPTO consents to registration. The cases involving the Redskins and The Slants are extreme. Most trademark rights battles do not drag on for years nor do they involve federal litigation. Still, it makes a great deal of sense to rely on the services of an experienced trademark attorney when you want to seek registration for your brand name or logo.
If you need Trademark Assistance
Texas trademark attorney Jeff Williams has tremendous experience when it comes to obtaining and protecting the intellectual property rights of his clients. If you are interested in obtaining or enforcing your trademark rights, contact the Law Office of Jeff Williams to learn more.