Much in line with how the 2013 season played out, Daniel Snyder and the Washington Redskins cannot win this week.  First, on Sunday, June 15, 2014, John Oliver rails on Mr. Snyder for holding fast to the Redskins name despite ongoing poor public sentiment.  Then, on June 18, 2104, for the second time in the last fifteen years, the TTAB issued a split decision cancelling certain REDSKINS registrations on the petition of several Native Americans claiming the marks are disparaging.  Blackhorse, et al. v. Pro-Football, Inc., Cancellation Proceeding No. 92046185.  The first time this occurred was in 1999 in Harjo v. Pro-Football, Inc.  Ultimately, on appeal, federal courts reversed the cancellation, finding the petitioners’ claims were barred by laches.  See Pro Football, Inc. v. Harjo, 565 F.3d 880 (D.C. Cir. 2009).  Now faced with the same arguments and evidence, but different petitioners, the TTAB again took action on the famed American professional football team name.

Section 2(a) of the Lanham Act prohibits the registration of any mark that “may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”  The TTAB applied the standard, two-part analysis which asks the following questions:

a)      What is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations?

b)      Is the meaning of the marks one that may disparage Native Americans?

The TTAB ultimately held that: (1) “[t]he term REDSKINS when used in connection with professional football retains the meaning Native Americans”; and (2) at the times of registration of the various REDSKINS marks, the meaning of the marks disparaged a “substantial composite” of Native Americans. 

With respect to the second prong, the TTAB relied largely on a 1993 resolution by the National Congress of American Indians (“NCAI”) which stated:

The term REDSKINS is not and has never been one of honor or respect, but instead, it has always been and continues to be a pejorative, derogatory, denigrating, offensive, scandalous, contemptuous, disreputable, disparaging and racist designation for Native American’s [sic]

Even though this resolution fell outside of the relevant time period for the registrations at issue (1967-1990), the TTAB relied on the backward looking language in the resolution, focusing on the language “it has always been.”  Finding that the NCAI represented approximately thirty percent of Native American tribes in the United States, the TTAB ruled that this was sufficient evidence to establish the views of a “substantial composite of Native Americans” warranting a finding of disparagement. 

With regards to the laches issue, the TTAB held that laches does not apply to disparagement claims that pertain to a group of which the petitioners comprise one or more members.  However, it should be noted that the decision in Blackhorse differed from the Circuit Court decision in Harjo primarily because of the fact that the petitioners in Blackhorse had only recently reached the age of majority prior to the filing of the petition.  This was not the case in Harjo.  This difference, coupled with the fact that the appeals in the Harjo case were still ongoing when certain of the Blackhorse petitioners reached the age of majority, provided the TTAB with another basis to reject the laches defense in Blackhorse despite the District Court’s prior ruling in the Harjo case.

Key Take Aways From The TTAB Majority Decision:

1.      Thirty percent of a class of a potentially disparaged group is sufficient to establish a “substantial composite.”  As the majority put it, “To determine otherwise means it is acceptable to subject to disparagement 1 out of every 3 individuals ….”

2.      A formal resolution, which sets forth a past and ongoing viewpoint of the disparaging nature of a word, issued by an organization that represented thirty percent of the relevant class over the relevant time period, is “clearly probative of the views of [that class] held at the referenced time period.”

3.      The TTAB is not willing to apply a laches defense to a disparagement claims “where the disparagement pertains to a group of which the individual plaintiff or plaintiffs simply comprise one or more members.”

A dissenting opinion challenged the majority’s findings, arguing that the record did not support its finding that the REDSKINS marks were disparaging at the time of registration.  This divergent opinion foreshadows the reality that this dispute is far from over, especially in light of the statement issued by Bob Raskopf, trademark attorney for the Washington Redskins, in which he promises an appeal.  See Raskopf’s full statement here. While this will be a nice distraction to Washington’s 2014 football season, I know some Washington fans that would much prefer the focus be on the game, not the name.

A full text of the TTAB’s decision can be accessed here.

And for a more comedic take on the situation, here is John Oliver’s rant on Daniel Snyder only a few days before the TTAB decision came down: https://www.youtube.com/watch?v=AJKfs4ZnbNE