PATENTS AND TRADEMARKS

The Washington Redskins' Trademark Fight

Here's what business owners can learn from the famous football team's legal battle to keep its trademark.
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On Thursday, March 7, 2013 the Trademark Trial and Appeal Board for U.S. Patent and Trademark Office (TTAB) heard oral arguments in a decades-old case with far reaching implications: whether the Washington Redskins' famous trademarks should be cancelled because they are offensive to Native Americans. The case has now been fully briefed and submitted for a decision. All that remains now is the court's determination: Will the Redskins franchise lose their famous trademarks?

The current challenge traces its roots to 1992 when Suzan Harjo led seven Native Americans in petitioning the TTAB to cancel trademark registrations owned by Pro-Football (aka The Washington Redskins) on the grounds that the trademarks at issue were scandalous and immoral and, accordingly, should not be permitted to be registered.

The basis for Harjo's request is well-founded in trademark law. The Trademark Act of 1946 prohibits the registration of trademarks that are immoral, scandalous, or generally offensives to a relevant segment of the population. In general, this doctrine has been interpreted to prohibit the registration of terms such as certain, more severe curse words (e.g., the "F" word) or words or phrases that are racial slurs (the "N" word).

The TTAB originally granted Harjo's petition and cancelled the Washington Redskins' trademarks because the term is considered a racial slur and offensive to Native Americans. However, on appeal the United States District Court for the District of Columbia overturned the cancellation on two grounds. First, it found that the TTAB lacked substantial evidence to find disparagement (i.e., that "Redskin" was a derogatory term for or towards Native Americans). Second, it determined that the petition was barred by laches, an equitable legal theory which prohibits a party from waiting so long to file a claim that it becomes unfair to the other party.

Years of appeals followed. In the end, and cutting through a significant amount of legalese, the case was ultimately decided on the issue of laches. More specifically, that the Harjo plaintiffs had waited too long to enforce their alleged rights against the Washington Redskins and, as such, could no longer do so.

But the plaintiff advocate group who initiated the original case appears now to have remedied its major obstacle. Recently, relatively speaking in terms of the duration of this entire fight, another case by Native Americans with younger listed plaintiffs was filed.  Having carefully considered why the initial case was decided against them these new plaintiffs have seemingly addressed and should get past the issue of laches that ultimately was the deciding factor in the original case.

As such, the case of Blackhorse v. Pro-Football has now been fully briefed, orally argued, and submitted to the TTAB for a decision. If history is any judge it would appear that Native Americans are poised to win this most recent battle cancelling the Washington Redskins' famous trademarks. What would likely occur when this happens would be years of appeals to delay the impact of the ruling. Will the Washington Redskins continue to circle the wagons around a brand that is, in many people's opinions, a racial slur? Only time will tell.

The writing is clearly on the wall and as they face the likely cancellation of their trademarks look for the team to rebrand and rename itself in the coming years.

Last updated: Mar 21, 2013

MATTHEW SWYERS | Columnist | Founder, The Trademark Company

Matthew Swyers is the founder of The Trademark Company, a Web-based law firm specializing in protecting the trademark rights of small to medium-size businesses. The company is ranked No. 138 on the 2011 Inc. 500.

The opinions expressed here by Inc.com columnists are their own, not those of Inc.com.



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