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American Intellectual Property Law Association

THE WASHINGTON REDSKINS CASE

WHAT IT MEANSWHAT IT DOESN’T MEAN

George William Lewis

Westerman, Hattori, Daniels and Adrian

IP Practice in Japan Pre-Conference

Washington, D.C.

October 21, 2014

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THE CASE – THE PARTIES

• Blackhorse, et al, a group of Native Americans, • petitioned the US Patent and Trademark Office to

cancel six Washington Redskins trademark registrations (word marks, NOT logos)

• owned by Pro-Football.• The basis for the petition was that the term

‘Redskins’ was disparaging to Native Americans at the time the challenged marks were registered (between 1967 and 1990).

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TTAB DECISION

The TTAB granted a petition to cancel six trademark registrations incorporating the term REDSKINS on the grounds that they were:

•disparaging to Native Americans;

• when they were registered and thus incapable of registration pursuant to 15 U.S.C. § 1052(a).

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Section 1052(a)

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

 •(a) Consists of . . .matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute;

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TEST FOR DISPARAGEMENT

Test for disparagement comprises a two-step inquiry:

•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?

•Is the meaning of the marks one that may disparage Native Americans? 

BOTH STEPS ARE CONSIDERED AT THE TIME OF REGISTRATION.

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WHO AND WHAT

• The TTAB first concluded that

 • The term “redskin” as used by the Washington

Redskins is meant to refer to Native Americans.

• a “substantial composite” of Native Americans would have found the term “redskins” disparaging at the time the marks were registered

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SUBSTANTIAL COMPOSITE

• A “substantial composite” does not necessarily involve a majority of the referenced group, and 30 percent of the group is sufficient to be a “substantial composite.”

• Whether the term “redskins” may disparage Native Americans, is based upon the views of the referenced group and NOT a poll of the American Public

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MARKS HELD TO BE DISPARAGING

• THE SLANTS for “Entertainment in the nature of live performances by a musical band.”

• STOP THE ISLAMISATION OF AMERICA for “providing information regarding understanding and preventing terrorism.”

• HEEB for “Providing news reporting, organized cultural events, calendars, blogs and journals featuring various topics, namely, religion, social introduction and popular culture via a global computer network; providing a website for the purpose of social introduction and dating; providing information featuring various topics, namely, social introduction and popular culture via a global computer network.”

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The United States Patent and Trademark Office Statement released with the TTAB’s Decision, a Media Fact Sheet explaining in clear terms what trademark registration means, the practical benefits of federal registration, the difference between registration and use of a trademark, and the nature of common law trademark rights

THE MEANING OF THIS DECISION

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WHAT THIS DECISION MEANS

If the cancellation of the registrations for the trademarks involved in this case is upheld on Appeal Pro Football, Inc., will lose the following legal benefits conferred by federal registration:

•The legal presumptions of ownership and of a nationwide scope of rights in these trademarks; •The ability to use the federal registration ® symbol, and; •The ability to record the registrations with the U.S. Customs and Border Patrol Service so as to block the importation of infringing or counterfeit foreign goods.

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WHAT THIS DECISION DOES NOT MEAN

• This Decision does not require the Washington, D.C. professional football team to change its name or stop using the trademarks at issue in this case:

 • The TTAB determines only whether a mark can be

registered with the federal government (and thus gain the additional legal benefits thereof), not whether it can be used; and

 • The mark owner may still have rights in the mark

based on use, known as “common law” rights—and those use-based rights may continue to exist even if a federal registration is cancelled.

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Thanks for your attention! Questions?

George William LewisPartner

Westerman, Hattori, Daniels & Adrian1250 Connecticut Avenue NW

Suite 700Washington, D.C. 20036

+1 (202) 822-4548+1 (202) 669-9899 (mobile)

glewis@WHDA.com