If you haven’t heard by now, this past week the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office canceled several trademarks owned by Pro-Football, Inc. (“Pro Football”) for the term “Redskins” on grounds that the marks were “disparaging to Native Americans.” This issue has been around for some time and has been the subject of previous lawsuits in which Pro Football has prevailed. Here’s a link to the latest opinion of the TTAB, which, if you’re interested, contains a summary of the previous litigation. Rather than try to summarize The TTAB’s 177-page opinion in this short column, let’s briefly examine two questions raised by the decision:
- Under what authority does the TTAB act to cancel a trademark for being disparaging?
- Is Pro Football free to use the term “Redskins” even though the TTAB has cancelled its marks?
When a party wishes to cancel another party’s trademark, it has two options: file a trademark cancellation proceeding with the TTAB, an administrative body that has the legal responsibility of adjudicating issues related to trademark applications and registrations, or file a lawsuit in United States federal court. In the Redskins matter, the “plaintiffs,” five native Americans, chose the administrative route.
Section 2 of the Lanham Act, the law that controls trademarks, spells out under what circumstances a trademark may not be registrable, the first criterion being any trademark that
Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute ….
15 USC 1052(a). Under this authority a court or administrative body such as the TTAB may cancel the registration of a “disparaging” trademark. Actually, it’s not quite that simple. The important question is how does a court determine whether a trademark is “disparaging?” With respect to native Americans, the courts have devised a two-part test:
 What is the meaning of the matter in question, as it appears 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?
With respect to the second question, the law states that whether a term such as “redskins” is disparaging to Native Americans, one must reference the views of Native Americans, not the the American public as a whole. Based upon the evidence before it, the TTAB determined that, indeed, Native Americans viewed the term as disparaging and, as a consequence, it cancelled Pro Football’s trademark registrations.
Okay, so now that Pro Football no longer has registered trademarks, can it still use the term “RedSkin”? The TTAB, as it noted, does not have the legal authority “to issue rulings concerning the right to use trademarks.” Why? That’s because trademark rights arise from use, not from registration. For example, if you have used an unregistered trademark (referred to as a common law trademark) first in time, you will prevail in litigation over a trademark holder that may own a registration but began using it later in time. Because these so-called common law rights are unaffected by a federal registration, Pro Football is free to use “Redskin.” A word of warning! Common law trademarks are governed by state law so if state law disqualifies disparaging marks, Pro Football has a problem, particularly if it tries to enforce its trademarks in court. Of course, whether continued use of “Redskins” is a good idea from a branding and marketing perspective after all the negative publicity is another question.
— Adam G. Garson, Esq.