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Intellectual Property

The REDSKINS Trademarks: What's the Real Impact of the Board's Cancellation Decision in Blackhorse?

 The dramatic pronouncement by the Trademark Trial and Appeal Board that it was cancelling the registrations of the REDSKINS trademarks has sparked a media frenzy. News reports, blogs and tweets have declared that anyone can now sell REDSKINS merchandise with impunity, or that Dan Snyder finally has no choice but to change the name of his team. Both of those assertions are wrong.

This Emerging Issues Analysis looks at the somewhat tortured history of the REDSKINS cancellation proceedings, the overall context of disparagement law, the holding in the case, the disagreement between the majority and the dissent, and the practical effect of the decision handed down by the Board.

Background and Procedural History

This cancellation proceeding is the opening salvo to the second round of formal challenges to the federal registration of REDSKINS by the Washington, DC football team. The Trademark Trial and Appeal Board had once before ordered cancellation of the registrations based on a petition filed in 1992, finding the marks disparaging. Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d 1705 (T.T.A.B. 1999) [an enhanced version of this opinion is available to subscribers]. A district court, however, reversed the decision, ruling that the petitioners' claim was barred by laches and that their allegation of disparagement was not supported by substantial evidence. Harjo v. Pro-Football, Inc., 284 F. Supp. 2d 96 (D.D.C. 2003) [enhanced version]. The D.C. Circuit reversed the district court decision, finding that the lower court had used an incorrect standard in evaluating the laches claim but not addressing the evidentiary issue. Pro-Football, Inc. v. Harjo, 415 F.3d 44 (D.C. Cir. 2005) [enhanced version]. On remand, the district court ruled again that laches barred the claim, and the D.C. Circuit later affirmed that ruling. Pro-Football, Inc. v. Harjo, 567 F. Supp. 2d 46 (D.D.C. 2008) [enhanced version], aff'd, 565 F.3d 880 (D.C. Cir. 2009). A new group of Native Americans filed a cancellation petition in 2006, while the Harjo case was pending, which has resulted in the latest Board decision cancelling the registrations. Blackhorse v. Pro-Football, Inc., 2014 TTAB LEXIS 231 (T.T.A.B. 2014) [enhanced version].

Disparagement Law

Section 2(a) of the Lanham Act provides that a trademark cannot be registered if it "[c]onsists of or comprises . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols or bring them into contempt or disrepute." 15 U.S.C. § 1052(a) [an annotated version of this statute is available to subscribers]. The Federal Circuit says that a trademark is disparaging if it may "slight, deprecate, degrade, or affect or injure by unjust comparison." In re Geller, 2014 U.S. App. LEXIS 8867 (Fed. Cir. 2014) [enhanced version]. See generally Gilson on Trademarks § 3.04[6][a][i][B].

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