The U.S. Trademark Trial and Appeal Board (TTAB) has finally ruled on a dispute involving the legitimacy of the Washington Redskins ‘Redskins’ trademarks. In a 2-1 decision in Blackhorse v. ProFootball, Inc.,, the Board ruled that at the time of its registration in the 1960s, the term “redskins” was disparaging to Native Americans. Since U.S. trademark legislation bars the registration of trademarks that are scandalous, immoral or disparaging, the decision that this term was disparaging at the time of its registration means that the registrations of 6 marks featuring the term “Redskins” are invalid. The result is that these trademarks will be struck from the trademarks register (pending the inevitable appeals). The team’s logo was not part of the challenge and remains a registered trademark.
There has long been controversy over the football team’s name – a previous challenge to the trademarks’ validity was unsuccessful due to procedural defects. There have also been repeated calls for the team to change its name voluntarily. More recently, President Obama suggested that it was time for the Redskins to choose a new name. The Redskins’ owner, Dan Snyder, has so far resisted calls for change, and he has indicated that the organization will appeal the TTAB decision.
It should be noted that even if the TTAB decision is upheld, the team will not be forced to change its name. The loss of the trademark registration is not a ban on using the name. It does mean, however, that the Redskins organization will lose the (substantial and significant) benefits of holding a registered trademark. They will lose national protection for the mark, making it much more difficult for them to protect the name against use by others.
As I noted in an earlier post regarding controversy in Canada around the adoption of the same name for a youth amateur football club, the Washington Redskins currently hold registered trademarks in Canada for both their team name and logo. These marks were registered in the 1980s. Although Canada’s Trade-marks Act does not specifically bar marks that are “disparaging”, it does have a clause that renders unregistrable those marks that are “scandalous, obscene or immoral”. Since a mark that falls into this category is not registrable, it is possible to challenge the validity of the trademark on the basis that it was not registrable at the time of registration. No one has yet brought such a challenge to the Redskins’ marks in Canada. There is very little case law in Canada on the scope or interpretation of “scandalous, obscene or immoral”, and, particularly in light of the TTAB decision in the U.S., it would be interesting to see what the outcome of such a proceeding might be.
(If you are interested in reading more about scandalous, obscene and immoral trademarks, have a look at my recent article titled Antisocial Trademarks, which is published in the Trademark Reporter.)
