REDSKINS Decision Commentary: The Redskins Case: Trademark Law & Post Modernism

April 1, 1999 – Firm News

The Trademark Trial & Appeal Board ["TTAB"] issued its decision in Harjo v. Pro Football Inc. on April 2, 1999 culminating some six years of contentiousness between the parties over several trademarks of the Washington Redskins football organization consisting of or including the word REDSKINS.

The Petitioners/Plaintiffs are seven individual Indians/Native Americans asserting as grounds for cancellation of the various trademark registrations that the term "redskin" is "a pejoritive, derogatory, degrading, offensive, scandalous, contemptuous, disreputable, disparaging and racist designation for a Native American people". The WASHINGTON REDSKINS denied the allegations asserting generally that: the football team has been named the WASHINGTON REDSKINS since 1937; that the trademark(s) and use of same reflect positive attributes of Native Americans consistent with those of a competitive sports team, among them "dedication, courage and pride"; that the longstanding use as a trademark for the football team gives rise to an associational meaning with football different from and subsuming of whatever the historic/present connotations of the term are in association with Native Americans per se.

The case raises many questions both societal and legal. The decision, from which an appeal has been promised, decided one very narrow legal issue against the football team: that the trademarks in question "may disparage Native Americans and may bring them into contempt or disrepute" contrary to Section 2 (a) of the Trademark Act. The registrations for the marks thus were ordered cancelled. It was also ruled that Petitioners failed to prove their case on other pleaded grounds for cancellation.

First, as to the Board's commentary on the contentious nature of the proceedings it is worth noting that neither the filing nor the conduct of the case was restrained by the normal economic pressures of such administrative commercial litigation. In highly unusual circumstances for such proceedings, neither the Petitioners nor the Respondent were paying for their representation.

Rather, the battle was one of surrogates [ unchecked by the very real economic considerations of attorneys fees] fighting, one might say, with ‘other peoples money'. Newspaper accounts indicate that the case began as "the brainstorm" of a then young lawyer who persuaded one of the Petitioners that the Cancellation procedure offered the possibility of accomplishing what had not previously been possible by persuasion, marketplace pressure or demonstrations of public protest [all of which had been attempted over the years by various individuals with little success or evident public support]. The firm representing Petitioners handled the matter on a pro bono basis. It is generally understood that a case taken on a pro bono basis is one in which there are no charges made for attorneys fees. Although the details of the fee arrangement between Petitioners and their counsel in unknown, it is a matter of public record that the firm in question maintains regular attorney-client relationship(s) with one or more American Indian tribes and their casino operations. As for the Respondent, Pro Football Inc. owner of the WASHINGTON REDSKINS football team and associated trademarks, the case was handled by counsel for the National Football League ["NFL"], of which organization Respondent is a member. Again, the details of the attorney client relationship here are unknown but it is generally the case that trademark related legal expenses are paid for and handled by the NFL in the name of and on behalf of their member teams with only an indirect payment made by the teams for such services.

The foregoing may at least partially explain why the TTAB repeatedly chastised the parties and their counsel characterizing the conduct of the case as "extremely contentious" and further stating that "[W]e are dismayed by the parties' apparent unfamiliarity with or disregard for the Rules of Practice pertaining to ...[practices of the Board]".

Secondly, the issues at the bottom of this case are more societal than commercial. Although certainly not the first case to utilize recondite legal procedures to further particular societal objectives, to practitioners in the trademark field both the case itself and the result are, well, highly unusual. The law of trademarks is commercial in nature, involving disputes of varying levels of importance between business concerns. The usual narrow role of the administrative tribunal here, the "TTAB", is that of arbiter of cases involving federal registration rights to trademarks. In the history of the TTAB there are no inter partes cases involving the Section of the Trademark Law relied on by Petitioners [15 U.S.C. 1052(a)] known to this writer that have been decided after a full trial on the merits. This is reflective both of the non-commercial nature of this litigation and the lack of commercial restraints on the litigants.

Given the Board's narrow jurisdiction and lack of experience with disputes including issues such as some of those interjected in this contentious case, it should be commended for rendering a well crafted and articulate decision. However, exception can and should be taken with the time and resources devoted to the case, as evidenced both by the length of the decision and by numerous prior interlocutory decisions on various motions, two of which were also published as Harjo v. Pro Football Inc. 30 USPQ2d 1828 (TTAB 1994) and Harjo v. Pro Football Inc 45 USPQ 2d 1789 ( TTAB 1998). Such resources are sorely needed and arguably better spent on the enormous and growing backlog of pending commercial trademark disputes requiring action at the TTAB.

The Order cancelling the trademarks results from a tension within the decision between: 1) the Board's finding of standing in the Petitioners; 2) the interlocutory dismissal of the equitable and affirmative defenses of estoppel and latches; and 3) the ruling that the dates of registration are the determinative dates for the showings to be made on the petitioners' claims.

Following both this decision and that of the Court of Appeals for the Federal Circuit in Ritchie v. Simpson 50 USPQ2d 1023 (Fed. Cir. 1999) the issue of "standing" to bring such actions is the most troubling. At this point in time, and to the extent these two cases stand as precedent, any individual or group can, with a technically crafted claim of being ‘offended', file and prosecute a petition to cancel the trademark registrations of virtually any business, organization or group. Trademarks viewed by some as politically incorrect and thus ‘offensive' or as offensive for other reasons can now be subjected to these procedures and possibly cancelled. Such a risk exists even though the ‘offense' taken by Petitioners may not have arisen from the actions of the trademark owner. In the hands of motivated intermeddlers, visions and rumors of such things as ‘Satanism' or other ‘hidden offensive meanings' lurking in trademarks which spread virulently from time to time now rise as causes of action before the Trademark Trial & Appeal Board against the commercial property of business and organizations.

In view of the ruling by the Board in the Harjo case that the determinative dates for the proof of Petitioners' claims are the issuance dates of the trademark registrations under attack, it is difficult to understand the equity in the interlocutory ruling striking the defenses of estoppel and laches. The six registrations in question were issued on different dates dating from 1967. The Petitioners filed the Cancellation Actions on September 10, 1992, some twenty five years after the issuance of the first registration ordered canceled in the April 1999 Board ruling . It is difficult from the decision to determine whether and/or just how in 1999 the Board arrived at the conclusion that the trademarks may have been disparaging of Indians and thus may have brought them into disrepute at the date(s) of their respective issuance. In fact, in so finding in the statement of their "Decision", the present tense is utilized. This, along with an evasiveness within the decision as to perceptions at the dates of issuance, couched reliance on a contemporary survey introduced by Petitioners as well as other indicators suggests that the Board [ wittingly or unwittingly] substituted a contemporary view of the meaning/perception of "redskins" for that extant as of the date(s) of registration. That is, the Board used a ‘now as then' view of public perception rather than the view existing at the time of the issuance of each registration. To the extent this was necessary because the evidence did not adequately speak to the perception at the specific dates in question or was the result of expediency and the desire to resolve all six Cancellations in the same manner, then arguably the Petitioners did not meet their burden of proof. At a minimum, and regardless of the wording of Section 14(3) of the Trademark Act [speaking to when an action for Cancellation can be brought] the Respondent football club should not have been precluded from showing how, after the passage of time, they were hampered in putting on a factual defense to the claims of perception as of the dates of issuance of the registrations and otherwise asserting the equitable defenses of estoppel and laches.

The "Redskins" case will be appealed and the trademarks will not be canceled, if at all, for some time, possibly many years. It is however likely that in view of this Board decision and the recent decision by the split CAFC panel in Ritchie v. Simpson, considerable mischief by intermeddlers will occur, further distracting the Board from its central mission, deciding commercial trademark disputes.