TEV Law Group
Good morning. Thank you, Gregg, for taking the time to talk. Why
is the "Washington Redskins" trademark registration cancellation an
|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
|Please summarize the party views. That is, what was the
|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.
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
USPTO Opinion is available online at the
USPTO and reproduced on our
website for public convenience.
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
(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
That is a common misconception about branding and trademarks. I've
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
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
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.
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
|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
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.
Gregg, you're saying it is a hard question? To call a
football team a derogatory term like the "Redskins" is
a hard question?
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
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
the claimants and the USPTO used the n-word analogy multiple
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.
terms relating to African Americans relate back to an old
condescending prejudice that the then-powers de facto
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
|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
Did the claimants prove the derogatory nature of the brand.
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
So what happens next.
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
I want to thank you. Is there anything
you want to add?
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.
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.