On June 18, 2014, the Trademark Trial and Appeals Board (TTAB) of the U.S. Patent and Trademark Office canceled six registered REDSKINS marks owned by Pro-Football, Inc.1 for the second time.2
In 1992, seven Native Americans filed a petition to cancel the same six REDSKINS marks. After seven years of litigation, the TTAB ordered the cancelation of the marks. In 2008, the United States District Court for the District of Columbia overturned the TTAB order under the affirmative defense of laches3 where the court stated that:
[D]efendant Romero unreasonably delayed his bringing of a cancellation proceeding and … his eight-year delay demonstrates a lack of diligence on his part. The court further finds that Defendant Romero’s delay has resulted in both trial prejudice and economic prejudice to Pro-Football, such that it would be inequitable to allow Defendant Romero to proceed with his cancellation petition.
in Pro-Football, Inc. v. Harjo, 567 F. Supp.2d 46, 87 USPQ2d 1981, 1903 (D.D.C. 2008).4
In 2009, the United States Court of Appeals for the District of Columbia Circuit affirmed the District Court’s decision to overturn the TTAB order in Pro-Football, Inc. v. Harjo, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009). Therefore, the D.C. Circuit never ruled on the TTAB’s finding of disparagement of the marks to Native Americans, but resolved the case on the issue of laches.5
In 2006, five different Native Americans filed a second cancellation proceeding with the TTAB under Section 14 of the Trademark Act of 1946, 15 U.S.C. § 1064(4).6 They petitioned to cancel respondent’s six registrations issued between 1967 and 1990 for trademarks having the term REDSKINS related to professional football-related services on the grounds that the registrations were obtained contrary to Section 2(a), 15 U.S.C. § 1052(a)7 since they contended that the REDSKINS marks disparaged them and brought them into contempt or disrepute.8
The TTAB indicated that they were only addressing the statutory right to registration as allowed under Section 2 (a) as they lacked statutory authority to issue a ruling related to the right to use a trademark.9 In footnote 33 of TTAB present cancellation order, it stated:
Section 2(a) prohibits registration of a mark “which may disparage … persons … or bring them into contempt, or disrepute.” As held in the prior order of May 31, 2011, “for purposes of this proceeding the guidelines for determining whether the mark is disparaging are equally applicable to determining whether such matter brings persons or institutions into contempt or disrepute.” ----- We, therefore, use the word disparage in this case as an umbrella term for “may disparage … or bring them into contempt or disrepute.”10
Therefore, the TTAB indicated that only the issues of disparagement and laches were involved in the action before them.11
The test for disparagement comprises a two-step inquiry: (1) 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? and (2) Is the meaning of the marks one that may disparage the reference group? as provided for in Pro-Football, Inc. v. Harjo, 68 USPQ2d at 1248; Harjo v. Pro-Football, Inc., 50 USPQ2d at 1740-41. See also In re Geller, __ F.3d ___, 110 USPQ2d 1867, 1869 (Fed. Cir. 2014).
Both of these questions must be answered as of the date that the mark or marks were registered per Pro-Football, Inc. v. Harjo, 68 USPQ2d at 1248; Harjo v. Pro-Football, Inc., 50 USPQ2d at 1735, 1741.
The Petitioners established that the disparagement claim only involved the trademark term REDSKINS and not the imagery in some of the registrations.12 Therefore, the first step is to determine what is the meaning of the term REDSKINS as it appears in the marks and as those marks are used in connection with the goods and services identified in the registration at the time the marks were registered.
The TTAB made the following determination as to the meaning of the term REDSKINS in the various marks at the time these marks were registered:
[A]s to “the meaning of the matter in question” “as used in connection with respondent’s services, REDSKINS clearly both refers to respondent’s professional football team and carries the allusion to Native Americans inherent in the original definition of that word.” Harjo v. Pro-Football, Inc., 50 USPQ2d at 1742, rev’d on other grounds, Pro-Football, Inc. v. Harjo, 68 USPQ2d at 1249.13
The second step required the TTAB to determine who was included in the reference group and whether the meaning of the REDSKINS marks disparaged this group at the time the marks were registered. The Petitioners indicated in their petition that the reference group was Native Americans.
The TTAB made the following determination relating to the reference group in which the TTAB indicates that the reference group is Native Americans:
In deciding the second question, whether the term “redskins” may disparage Native Americans, we look not to the American public as a whole, but to the views of the referenced group (i.e.,Native Americans). Pro-Football, Inc. v. Harjo, 68 USPQ2d at 1247; Harjo v. Pro-Football, Inc., 50 USPQ2d at 1739.14
The TTAB goes on to explain that views of the reference group are “reasonably determined by the views of a substantial composite thereof” Pro-Football, Inc. v. Harjo, 68 USPQ2d at 1247; Harjo v. Pro Football, Inc., 50 USPQ2d at 1739. The TTAB also goes on to say that a substantial composite of the reference group does not have to include all Native Americans nor even a majority of Native Americans and that the determination of what comprises a substantial composite of the reference group is a fact to be determined at trial.15
The TTAB made the following statement about making the determination of what comprises a substantial composite of the reference group:
In making this determination, “we are charged with taking into account the views of the entire referenced group who may encounter [respondent’s services] in any ordinary course of trade for the identified goods and services.” Heeb Media, 89 USPQ2d at 1075.16
The TTAB made the following conclusions with regard to what comprises a substantial composite of the reference group:
We turn then to the second question, “was the meaning one that may have disparaged” a substantial composite, which need not be a majority, of Native Americans, at the times of the registrations. The crux of this case is whether or not this record supports petitioners’ contention that the answer to that question is yes.17
The record establishes that, at a minimum, approximately thirty percent of Native Americans found the term REDSKINS used in connection with respondent’s services to be disparaging at all times including 1967, 1972, 1974, 1978 and 1990. Section 2(a) prohibits registration of matter that disparages a substantial composite, which need not be a majority, of the referenced group. Thirty percent is without doubt a substantial composite.18
The TTAB further stated that evidence that some of the Native American community do not find the term “REDSKINS” disparaging when used in connection with professional football does not negate the opinion of those who do find it disparaging.19
Accordingly, the TTAB states:
In view of the above, petitioners have shown by a preponderance of the evidence that a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with respondent’s services during the relevant time frame of 1967-1990. Accordingly, the six registrations must be cancelled as required under Sections 2(a) and 14(3) of the Trademark Act.20
The TTAB did allow the respondent the defense of laches, but concluded that respondent’s invocation of the laches defense fails with these petitioners. TTAB did preserve this issue for appeal.21
It is interesting that one TTAB judge has provided a dissenting view in the TTAB cancelation order stating that the petitioners failed to show that a substantial composite of Native Americans found the term REDSKINS disparaging in connection with respondent’s services during the relevant time frame of 1967 to 1990.22
While one would hope that the appeal of this cancelation order would bring clarity around these issues, recent appeal results have tempered expectations. So we will have to wait and see.