The United States Patent and Trade-mark Office ordered the cancellation of six (6) trade-mark registrations containing the word REDSKINS. (I will refer to REDSKINS as the “Offensive Term” throughout the remainder of this article.) The owner of the cancellations is Pro Football, Inc. who uses the trade-marks to brand the National Football Team located in Washington, D.C.
A group of Native American petitioners brought a cancellation proceeding against the trade-marks to the Trade-mark Trial and Appeal Board. In a 2-1 decision, the Board found based on the evidence before them that the registrations must be cancelled because they were disparaging to Native Americans at the respective times they were registered. The Board stated that U.S. trade-mark law prohibits registration of trade-marks that may disparage persons or bring them into contempt. As a result of the decision, the trade-marks will lose the legal benefits that go along with registration.
The Board used a two-part inquiry in order to determine whether a trade-mark is disparaging. First, they looked at the likely meaning of the mark as it is used. Second, if that meaning refers to an identifiable group, would a “substantial composite” of the group have found the meaning disparaging at the time of registration.
In the first part of the inquiry, the Board concluded that the Offensive Term as used by the football team is meant to refer to Native Americans. The football franchise had argued that the term had a secondary meaning, namely a football team. The Board ruled that even if the Offensive Term had a secondary meaning, such fact had not stripped the Offensive Term of its ethnic meaning.
In the second part of the inquiry, the Board ruled that a “substantial composite” of Native Americans would have found the Offensive Term disparaging at the time the marks were registered. The Board relied primarily on a resolution that the National Congress of American Indians passed where they stated that the term has always been and continues to be a disparaging and racist designation. The Board also cited other evidence the petitioners submitted such as the labelling of the term as offensive in dictionaries, its decline in usage as a term to refer to Native Americans, and Native American objections to the term.
The lone dissenter on the Board took that position because he believed that insufficient evidence had been filed to show that the Offensive Term was disparaging at the time the marks were registered. He did not suggest that the term was not disparaging.
What’s next for Pro Football, Inc.? Well, they’ve already said that they will appeal the ruling. That means that the trade-marks will remain registered pending the outcome of the appeal. That process could last another 2 years.
The effect of the ruling also doesn’t mean that Pro Football, Inc. must stop use of the Offensive Term. Rather, it means that should the cancellations be upheld, Pro Football, Inc. would no longer benefit from the protections afforded to registered trade-marks. That means that should the registrations be cancelled and Pro Football, Inc. wish to enforce the unregistered trade-marks, it would have to prove that the trade-marks have a nation-wide reputation; it will no longer be presumed. Pro Football, Inc. would also no longer be able to bring infringement actions on the basis of its registrations or to recover certain types of damages under the U.S. Trademark Act (called the Lanham Act). And the ® symbol would have to be removed from all references to the trade-marks.
Astonishingly, this matter had to be brought before the U.S. Trade-mark Trial and Appeal Board when the decision to stop using the disparaging term should have been made many years ago. It seems that those who support use of the Offensive Term cannot identify with the perspective of aboriginal peoples.
Under Canadian trade-mark law, the Trade-marks Office can stop a trade-mark application from proceeding through the application process if it finds that the trade-mark is “scandalous, obscene, or immoral”. Should any trade-mark application become registered that is indeed “scandalous, obscene, or immoral” as at the time of registration, it is vulnerable to invalidation.
Unfortunately, both Canadian and U.S. Trade-mark law have an undesirable limitation on the ability to invalidate a derogatory trade-mark registration. For both countries, the trade-mark must have been denigrating at the time of registration. The meanings of terms change over time. Sometimes an ethnic group is referred to according to a term that is later interpreted as derogatory. Moreover, the most marginalized and oppressed groups are the ones who are most likely to have a denigrating trade-mark application filed concerning them. And because those groups would have the least power and organization, they would be the least capable of creating a case to combat the denigrating trade-mark application at the time of registration. In respect of any terms that denigrate an ethnic group, the law should be flexible enough to permit the invalidation of those registered trade-marks at any time they are considered to be demeaning or racist. I don’t see the public benefit of keeping racist trade-marks registrations on the register simply because there is insufficient evidence from the time of registration to show that the offensive term was denigrating at that time.
In Canada, we fortunately have a good recent story concerning a high school which has chosen to stop use of a denigrating reference to aboriginal Canadians. Western Canada High School in Calgary recently changed the name of its sports teams from the “Redmen” to the “Redhawks”. Their logo featuring a native bust wearing a headdress will also no longer be used.
One can only hope that the Trade-marks Office in Canada will be vigilant in preventing the registration of any trade-mark applications that seek to appropriate an ethnic group in a denigrating way for the purposes of branding products and services. And to the extent that any trade-marks have slipped past the Trade-marks Office, those marks remain open to challenge. Despite the position of those who wish to keep using the Offensive Term, it is heartening to see that trade-mark law does have protections against its subversion for the purpose of profiting from the denigration and dehumanization of an ethnic group.
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Ryan Smith is a lawyer and trade-mark agent at Feltmate Delibato Heagle LLP. Ryan can be reached at 905-287-2215 and firstname.lastname@example.org.