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USPTO Cancels Six of the Washington Redskin's Trademark Registrations on the Basis of Racism.

WASHINGTON, D.C., June 18, 2014 -- The registrations of six of the Washington Redskin's trademarks were cancelled today by the United Stated Patent & Trademark Office (USPTO) in a revisiting of a 1999 decision finding the marks disparaging of Native Americans.

The Blackhorse v. Pro Football, Inc. decision of the Trademark Trial and Appeal Board (TTAB or “Board”) today resolved the joint petition filed at the USPTO by six Native Americans, who sought cancellation of six federal registrations for trademarks that include the term “Redskins.”

The Lanham Act allows the USPTO to deny or cancel trademark registrations on the basis that the mark “consists of or comprises immoral, deceptive, or scandalous matter; or may be disparaging to 'people, institutions, beliefs, or national symbols.' ”

The petitioners established by a preponderence of the evidence that the term “Redskins” was disparaging of Native Americans when used in relation to professional football services. Thus, in accordance with federal law, the federal registrations for the trademarks containg "Redskin" or derivations thereof were cancelled.

Among the findings of fact were: the word REDSKIN on its face is and always has been a racial designation; the word REDSKINS is a plural of the word REDSKIN; the word REDSKIN refers to the real or imagined skin color of Native Americans; racial slurs often refer to real or imagined physical differences; in 1966 dictionaries began indicating the term REDSKIN to be offensive, disparaging, contemptuous or not preferred; all dictionary entries in the Barnhart report from 1983 onward include a usage label indicating the term REDSKIN is offensive, disparaging, contemptuous or not preferred; the National Congress of American Indians began advocating against use of respondent’s name REDSKINS in the 1960’s.

The National Football League and the team's owner Daniel Snyder asserted the defense that the petitioners should have been barred from seeking cancellation because the registrations have existed for eight decades and has been the subject of significant investment.

When an application is filed with the USPTO to register a trademark, the public is given notice of the applicant's intention to use the mark and to receive registered status in addition to giving members of the public an opportunity to object to the registration. If a valid objection is not raised within 30 days of the public notice, the USPTO grants the registration. After the registration is granted, members of the public with a legally recognized interest (i.e. standing) may still file a petition with the USPTO to cancel a registration on a number of grounds. If a registered trademark remains in continual use for five years after the registration date without a valid objection, the owner of the registered trademark may file for incontestible status. An incontestible trademark registration means the owner's registration may only be cancelled on the grounds that: the registration was originally obtained by fraud on the USPTO, the trademark has subsequently become generic, or the trademark was abandoned (i.e. the trademark was not in continuous use).

The decision comes in the wake of Harjo v. Pro-Foolball, Inc. in 1999 which found the trademarks disparaging and ordered the registrations cancelled, but was later reversed on appeal to the United States District Court for the District of Columbia on summary judgment by ruling that the petitioners waited too long to file their complaint. The District Court's decision was appealed to the US Court of Appeals for DC which did not address the issue of whether substantial evidence supported the Board’s finding of disparagement, but only addressed the issue of whether the objection to the registration was made in a timely manner.

While Harjo was pending, six new individual petitioners filed a petition to cancel the same registrations for the "Redskins" marks.

The loss of registered status represents the loss of a number of legal rights formerly held by the NFL and the team's owner, but does not constitute a complete bar to the use of the trademarks.

While the team and the NFL may continue to use the name "Redskins" and to sell merchandise bearing the "Redskins" trademarks, the TTAB's decision will likely translate into significant financial losses and additional legal headaches.

The benefits of a federal registration include: the ability to recover attorneys fees, court costs, and statutory damages; the legal presumption of ownership and use on a national scale; constructive notice to the public eliminating the defence of ignorance; the ability to enlist the U.S. Customs and Border Patrol Service to block the importation of infringing or counterfeit goods; and stiffer criminal penalties for counterfeiting registered goods and services. The loss of these legal rights will make it more difficult and more expensive for the NFL and Daniel Snyder to enforce their rights in the "Redskins" logos while deminishing their potential recoveries from successful lawsuits.

Today's ruling does not go into effect until all appeals have been exhausted.