Hail to the R3D$K!N$?

Obama weighs in on controversy

By attorney Corey Donaldson, Special to THELAW.TV

When recently asked about the name "Redskins" used by the NFL franchise located in the Washington, D.C., area, President Barack Obama chose his words very carefully: "If I were the owner of the team and I knew that there was a name of my team -- even if it had a storied history -- that was offending a sizable group of people, I'd think about changing it." In response, Dan Snyder, the owner of the franchise, was much more direct: "We'll never change the name. It's that simple. NEVER -- you can use caps."

Although recently making headlines, the Redskins controversy has spanned decades. Pro Football, Inc., the owner of the "Redskins" trademarks, has federally registered six such marks with the United States Patent and Trademark Office. The first legal challenge of note to the trademarks occurred more than 20 years ago in 1992, when in Harjo v. Pro Football, Inc. a group of Native Americans filed an action with the USPTO to cancel the trademark registrations. Under Section 2(a) of the Lanham Act, the law governing federal registration of trademarks, a mark is unregistrable if it contains "matter which may disparage (persons) or bring them into contempt, or disrepute." The group of Native Americans was successful in its challenge before the USPTO, only to have a district court reverse the decision and allow the registrations to remain valid.

Now, two more challenges to the "Redskins" trademarks exist: one before the USPTO, and one before Congress:

Blackhorse v. Pro Football, Inc.

The plaintiffs in Blackhorse v. Pro Football, Inc. are seeking to cancel the "Redskins" registrations on essentially the same grounds as those presented in Harjo. Why might the plaintiffs here ultimately be more successful than those in Harjo? One ground upon which the district court based its decision was laches, essentially stating that the Harjo plaintiffs had waited too long after turning 18 to bring their claims. The Blackhorse plaintiffs were all between the ages of 18 and 24 upon filing, and thus the laches defense will likely not apply.

That does not, however, mean that the Blackhorse plaintiffs have an easy road ahead of them. In addition to the laches ruling, the district court also held that the evidence before the Trademark Trial and Appeal Board (the USPTO forum for cancellation proceedings) was insufficient. Further, acquiring enough evidence may be difficult since the Blackhorse plaintiffs must prove that the term "redskins" was disparaging to a "substantial composite" of Native Americans. Second, the "disparagement" section of the Lanham Act appears in Section 2(a) of the Act, which addresses registration, and not in Section 14, which addresses cancellation. While most grounds for cancellation under Section 14 address the meaning of a mark "at any time," cancellation based on disparagement under Section 2(a) requires proving disparagement at the time of registration -- or between 1967 and 1990. Finding and presenting enough evidence from over two decades ago may prove to be difficult.

The Non-Disparagement of Native American Persons or Peoples in Trademark Registration Act of 2013

The second challenge to the "Redskins" trademarks will require votes instead of evidence. Under the proposed Non-Disparagement of Native American Persons or Peoples in Trademark Registration Act of 2013, introduced on March 20, 2013, by Rep. Eni Faleomavaega (D – American Samoa), no mark containing the word "redskin" or any derivation thereof would be registrable under Section 2(a) if it is used in connection with Native Americans. Further, and perhaps more applicable to the current "Redskins" trademarks, such trademarks would be subject to cancellation if already registered. While the bill is still in its infancy, if passed in its current form the "Redskins" trademarks would presumably be canceled very soon thereafter.

No more 'Redskins' registrations – What next?

Even if the "Redskins" trademark registrations are eventually canceled through the USPTO, the courts, or Congress, significant questions would remain. Forbes recently valued the Redskins "brand" at $145 million, a significant part of which likely comes from its federally registered trademarks. Stripping these trademarks of their federal registration would likely severely diminish their value, as enforcement of the rights associated with the marks would become much more difficult. Would such a diminishment constitute a constitutional regulatory government taking, meaning that the NFL franchise would be entitled to just compensation? Whether or not intellectual property, and specifically trademarks, are covered under the Takings Clause of the Constitution is unclear. Another lingering issue: even if the federal registrations of the "Redskins" trademarks are canceled, under current jurisprudence the NFL franchise would still have common law trademark rights. Would courts continue to hold these trademarks to be enforceable? Alternatively, would courts begin to rule against enforcing these marks on public policy grounds, taking a hint from a TTAB or court ruling and/or the Non-Disparagement Act? That being said, these questions will remain moot unless the Blackhorse plaintiffs or Rep. Faleomavaega are successful, since Dan Snyder has already let everybody know when he will voluntarily change the "Redskins" name: N-E-V-E-R.

The author, Corey Donaldson, is a USPTO registered patent attorney in Westlake Village, Calif., at the firm Koppel, Patrick, Heybl & Philpott.