We Represent the Entrepreneurial Spirit ®    



Vision Courage Tenacity
Do you have what it takes? We can help you succeed. excellence@zegarelli.com
25 Years of Trust. 25 Years of Bonded Team Relationships. 25 Years of Excellence.
Questions for Gregg Zegarelli, Esq.
Redskins Trademark Registration Cancellation

We sat with Attorney Gregg Zegarelli, Esq. to discuss the controversial topic of the Washington Redskins trademark registration cancellation in light of the ruling last week by the United States Patent and Trademark Office in Amanda Blackhorse et. al. v. Pro-Football, Inc.
TEV Law Group Gregg Zegarelli, Esq.
Good morning.  Thank you, Gregg, for taking the time to talk.  Why is the "Washington Redskins" trademark registration cancellation an important topic? At its core, the entire consumer business ecoucture is reputation-based.  Trademarks are a fundamental part of the business marketing that transcends the related commercial transactions.  Trademarks can be extremely valuable.  So, for a brand like the "Washington Redskins," the stakes are, of course, very high.

This particular trademark, "Washington Redskins" has special social and political components.  Even more so, a "famous" trademark is a special type of brand, described in law as a brand that is widely known through the general consuming public of the United States; that is, if you walk into a supermarket and ask about iPods, Disney and the Washington Redskins.  We're talking about the cancellation of what is probably a "famous" trademark that has been used for generations, based upon, for many, a new social awareness.

Please summarize the party views.  That is, what was the claim. The case was brought for cancellation of a registered trademark by five Native Americans, also known as "American Indians."  The U.S. Patent and Trademark Office (the, "USPTO"), by law, cannot register the trademark of a disparaging brand.  The claim was that various brands registered between 1967 and 1990 containing the term "Redskins" were disparaging to Native Americans, at the time when registered. 

Among other defenses, the owners claimed "laches," which is the legal term for "waiting too long to file a complaint."  The USPTO cancelled the registrations, and it will now presumably be decided on appeal to the judicial system.

The USPTO Opinion is available online at the USPTO and reproduced on our website for public convenience.

I don't quite understand.  You mentioned the USPTO, but appeal to the courts.  Isn't the USPTO a court? No.  The USPTO is a legislative branch administrative agency of the government.  It is the agency that Congress—which is the legislative branch—established to issue trademark registrations pursuant to the Federal Lanham (Trademark) Act.  It is also the agency that resolves disputes regarding its registrations.  But, it is not a court, and it is not within the judicial branch of the government.  Parties can appeal from the administrative agency into the judicial system.
Well, then, can the USPTO determine all the same issues that a court can determine? No, again.  The USPTO only determines matters relating to the registration of a trademark.  Courts can determine all issues in a dispute, that is, a superset of issues.  For many cases, the claimant can take action in either the USPTO or the federal courts.  For example, the USPTO cannot grant damages; it only rules on the registration.  Federal Court can hear all issues, for example, including damages claims, as well as injunctions.
You mentioned injunctions.  If the registration is cancelled, then the Washington Redskins must stop using the brand, right? Actually, no.  That is a common misconception about branding and trademarks.  I've taught many courses to attorneys on this issue for many years, and it is confusing to many people, unless you are an intellectual property attorney. 

Trademarks are developed by actual usage in the marketplace.  You do not need to register a trademark.  Courts, being the judicial branch of government, protect brands, reputations and the likelihood of market confusion as a matter of judicial common law in addition to violations of statutes.  Bottom line: a "registration" of a trademark with the USPTO is optional.

Registering a trademark, pursuant to legislative laws, offers significant benefits, but registration is not required.  Therefore, the cancellation of a registration does not cancel the trademark; it only cancels the "registration" of the trademark.  This rule of intellectual property is similar to the rule of real property.  If I give you a deed to land and you accept it, you own the land; recording the deed is actually optional—important for many reasons—but legally optional to own the land.

The only way to stop the Washington Redskins from using the "Redskins" brand in the marketplace is by a court order, not by the USPTO.  The USPTO is an administrative agency without that power.

Why did the claimants take action in the USPTO and not the courts? That is a matter of litigation strategy not apparent from the record, although some history is in order.  The general question already was litigated in Pro-Football, Inc. v. Harjo, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009).  This case of seven years of USPTO litigation involved substantially similar or the same question.  The USPTO cancelled the registrations, the ruling was appealed to the judicial branch, the trial court ruling reversed the USPTO, the case was then appealed to the appellate D.C. Circuit Court and upheld, meaning the registrations continued to be effective.  The record of the proceeding is, as you might expect, complex, but the claimants may have preferred starting with a tribunal at the USPTO that granted a favorable initial result.

Why is there a disconnect between the USPTO and the court system?
Well, that is a great question.  Technically, there should not be a disconnect.  The appeals process is part of our judicial system, of course.  So, emotions aside, the law remains the same for everyone.  Mistakes by lower administrative agencies and courts occur in the regular course of events, and reversals and remands (sending the question back again) are not necessarily unusual. 

However, that said, my own experience is that the USPTO tends, for better or worse, to have a more limited experiential view of evidence and law.  Courts are the ultimate repository for resolving most or all disputes in society and draw upon that broad view.  The USPTO has a very narrow scope of view.  Therefore, courts tend to draw on a different experience.  This is part of the system.  Keeping mind that the highly unusual exception aside, all of the attorneys and judges involved in the resolutions are highly educated and trained.  Many of these questions are factually hard questions.

Wait, Gregg, you're saying it is a hard question?  To call a football team a derogatory term like the "Redskins" is a hard question?  The pointed question you ask, alone by itself, might be an easy question for a water-cooler conversation.  But that is not all of our facts.  Good judges put the dispute into a context.  I often say, "Black and white so easy to say, but judgment rests in shades of the gray."  Good judges, and King Solomon, do not jump to easy conclusions.  We have to step back and consider the context carefully.

The easy facts might be if someone, today, tries to register a derogatory term for a sports team.  The injured party immediately goes to the USPTO and gets the registration cancelled.  That is an easy one.  You start with a conclusion that the term is derogatory, and there is no offsetting equitable defense of waiting to complain.  But let us look around a bit to assess some of the arguments in this case.

From the view of the owners of the brand, is it reasonable to assume that a national football team wants a ridiculous and weak helmet?  No.  The football team wants a powerful and respected symbol.  The term "Redskins" was intended to cause fear and respect into the opponent.

Now a very natural knee-jerk reaction is to liken "redskins" with "blackskins."  And, as you can read in the Opinion, the claimants and the USPTO used the n-word analogy multiple times.

Please explain some of the "arguments" and "issues" with the derogatory nature of the term.  Isn't this just like using the n-word on helmets?

Maybe, maybe not, but we have to step back a moment.  There is a distinction from the rhetoric.  Notice that I cannot even repeat the n-word that is actually used in the analogy in the Opinion.  Some words are so vile as to not use at all unless you must.

But, the cultural history of the Native Americans is not the same as African Americans.  American Indians were not introduced into this country or culture as slaves.  Derogatory terms relating to African Americans relate back to an old condescending prejudice that the then-powers de facto themselves created.  The n-word is an inherently derogatory slave term.  I can't even say it, it is so repulsive.  And, analogies to that term may be so powerful as to prejudice the assessment of the context.

Apart from how African Americans were introduced into American culture, it is well-documented that African warriors and the Zulu warriors were just as proud and fierce as the American Indians or the European settlers.  The difference is that American culture was introduced to African Americans as slaves, by gunpowder and law.

So, the n-word analogy really does not apply.  A better analogy might be if a football team wants to call themselves the "Blackskinned Zulus," because it uses a color reference in the context of instilling fear and respect.  This is actually a closer analogy.

Let us say there are five people in the room, one of whom is a Zulu.  The four non-Zulus find the term one of respect and power, but the Zulu himself is insulted, rather than proud, and believes the term derogatory.  Such as it is for slander and reputation, derogatory terms and ridicule requires some third-party involvement.  Apart from superficial media sound-bites, the legal question is quite harder than it appears superficially.

There was a Seinfeld episode dealing with a barber shop Native American tobacco totem theme.  Apart from the fact that this episode made it through network clearances, I mention it not because of what may be funny scenes to some people (maybe at the expense of others), but to assess the context of intention in light of social stereotypes and social reasonableness of intentions. 

There are probably a lot of good-person priests who have been cheering at Redskins games for many years without thinking twice about the term as derogatory.  However, as the Opinion points out, the intention of the speaker is not the standard from a legal perspective, only a social and political perspective.

If the brand was registered as long ago as 1967?  It does seem that the claimants waited a really long time, and certainly after many years of pervasive national football seasons. Branding is more important now because of the pervasive nature of communications.  Trademarks, domain names and such things are much more part of the business eco-system.

But this is not the first time this question was raised.  It was raised in the Harjo case in which the registrations were ultimately upheld.  Laches, or delays in bringing claims in trademark actions, is very important.  The reason is because you cannot wait and watch someone to build a business and then raise a claim later.  In fairness, the other people using the brand may not have intended the consequence that is claimed (like Seinfeld), and a late claim destroys the value that is the heart of other people's real financial lives.  Even if the use if socially thoughtless, or thoughtlessly insensitive, that is not the question: the question is why did the injured party wait so long to raise an issue.

What is interesting in the case, is that laches is applied differently in cases relating to derogatory terms.  Remember, if the term is not derogatory in the first place, then the defense of laches is immaterial.  A defense only is important if the pre-conditional claim is made successfully.

Did the claimants prove the derogatory nature of the brand. Yes.  For disparagement claims, the law is to look to the group implicated and not to society as a whole.  Therefore, it is not a survey of what the general population thinks, but what a "substantive composite" (not necessarily the majority) of the referenced group thinks.
So what happens next. Presumably the matter will be decided within the judicial system as before.  Importantly, there is a lucid dissent by Administrative Judge Bergsman which addresses flaws in the view of the evidence presented and the applicable law; he also addresses the issue of re-litigating the question.  [Ed. Page 81 of the Opinion.]

I want to thank you.  Is there anything you want to add?

I think this is a fascinating case for legal and social reasons.  If we ask most people in America about any designations based upon the color of person's skin, it immediately becomes the subject of debate and offense.

The very interesting point is to play out the process if the Redskins lose the case.  If that happens, the registrations are cancelled.  However, the trademark rights are not destroyed.  As I stated, the Redskins still have unregistered trademarks.  These unregistered trademarks still have the presumptive force of both legislative and judicial power for enforcement.

So, let's say the registrations are cancelled, and someone infringes on the intellectual property brand.  The owners can sue in court for enforcement.  But, then, the practical question becomes how a jury or judge will view the power of the brands that are claimed to be derogatory and whether that is proper evidence in the infringement proceeding.

And, even if the Washington Redskins win, ultimately, all in, this is a branding question with significant social and political implications.  Even with a win, the organization will appear to be obdurate, socially incalcitrant, and socially insensitive. 

Accordingly, if the Washington Redskins win again, they still have social and political market issues; if they lose, it is even worse.  Therefore, either way, the Washington Redskins have a very practical dilemma for which a staged and controlled concession to a name change may now be the only way to win the game. 

Thank you again. My pleasure.  Thank you.

[Home]  [Search]  [Terms of Use]  [Mailing List]  [Feedback]  [Payment]  [Contact Us Now]


Unless otherwise specified above, Copyright © 2004-2014 TEV Law Group, PC. All rights reserved.  Use of this Website governed by our Terms and Conditions. "We Represent the Entrepreneurial Spirit®," "The Entrepreneurial Spirit®," "The Cardinal Entrepreneurial Virtues™," "Vote for the Quote®," and "We will appreciate your business" among others, are marks and registered marks of TEV Law Group, PC.


This email was sent to [[AutoEmailAddressee]].  Click here to cancel.