Sports Teams Should Rethink the Validity of Their Trademarks

Written by Katelyn Crawford

The word “Redskin”: its use has been controversial for decades, and its meaning has been offensive for centuries. Yet, one of the most well-known NFL teams has trademarked the term, using the trademark to sell RGIII jerseys across the South, license it to appear on corn-hole boards across the Midwest, and brand its billion dollar franchise across the nation.  Despite the public outcry from Native American groups, Daniel Snyder, the ever-indignant Washington Redskins owner, has vowed to keep the namesake and defend the trademark.

But now Snyder might have a hard time keeping that vow.

The United States Patent and Trademark Office, specifically, the Trademark Trial and Appeal Board (“TTAB”), recently cancelled the professional football team’s trademark registrations. The case, Blackhorse v. Pro-Football, Inc., ruled that the trademarks—mainly the name “Redskins” and the profile of an older Native American Chief—were disparaging to Native Americans at the time they were approved for trademark, and therefore were invalid under U.S. trademark law. Specifically, the court ordered the trademarks to be cancelled “on the ground that the registrations were obtained contrary to Section 2(a), 15 U.S.C. § 1052(a), which prohibits registration of marks that may disparage persons or bring them into contempt or disrepute.” The court relied on a resolution published by the National Congress of American Indians, which condemned the word “redskin,” because it is “pejorative, contemptuous, disreputable, disparaging and racist.”

In fact, when the court originally heard this case in 1999, it reached the same decision, citing that the term was disparaging to a large portion of the Native American community. The case was then appealed to the U.S. District Court of the District of Columbia, which reversed the TTAB decision because of lack of evidence and the affirmative defense of laches. Fortunately, new claims were brought in 2003, and because of the America Invents Act, the appellate jurisdiction changed from the original U.S. District Court of the District of Columbia to the U.S. District Court for the Eastern District of Virginia. The change in jurisdiction allowed the case to be heard again.

This decision has left many wondering, “What’s next?” The answer seems to be, “It’s not clear.” A cancelled trademark means the team may still use it, but so can others—without payment or penalty.

Since the ruling, the team has continued to use the name. They have not filed to register a new, less offensive trademark, and have revealed no plans to change the team’s name. In fact, Snyder is currently appealing the TTAB decision, and the players suit up soon to begin the 2015 season on August 7th.

The Washington Post has come out in full support of the team’s continued use of the disparaging name. The paper recently announced a partnership with the team, which will provide more coverage and more exclusive stories about the team to readers.

But not everyone is complicit or quiet about this insulting name. The National Law Review published an article supporting the TTAB and the Native Americans who find the racial slur disparaging. The publication commented that this is a perfect example of how big corporations and sports icons, like Washington’s team, must follow laws and face re-branding if they are outright offensive.

Although the article did not specifically point to other teams, the Cleveland Indian’s trademarked mascot, Chief Wahoo, has come under fire. The Native American group People Not Mascots plans to file a federal action against the baseball team this summer.  They view the TTAB decision as a hopeful sign that Cleveland will lose their trademark as well. However, legal commentators have noted that the teams’ trademarks are distinguishable, because the term “Indian” is not considered a racial slur like “redskin.”

As for now, the TTAB decision is being appealed, and the term is still being used. Only time will tell if the TTAB decision is affirmed, and whether other similar trademarks, like Chief Wahoo, will be cancelled as well. However, one thing is certain: the pressure is on sports teams to rethink the validity of their trademarks, and consider re-branding.

About the author

Katelyn Crawford

Katelyn is a graduate of George Mason University School of Law, where she studied economics as applied to law. She also completed course work at the School for Conflict Analysis and Resolution. While living in Washington, D.C. Katelyn was a journalist, and worked in numerous policy areas including technology, military and education. She now works in financial compliance, and writes for multiple publications. When Katelyn isn't being a lawyer or writer, she is a photographer. You can follow her on twitter @WeSingSin.

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