The June 18, 2014 decision Blackhorse v. Pro-Football, Inc. by the USPTO's Trademark Trial and Appeal Board (TTAB) to cancel the Pro-Football, Inc.'s registrations, obtained between 1967 and 1990 for the trademark "Redskins" has garnered much attention.  The USPTO has authority under 15 USC 1052 (a) and 15 USC 1064(c) to cancel or refuse registration for marks which are "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."  This statutory exclusion is occasionally the subject of controversy, but usually in the context of what constitutes unprotectable subject matter, not that such subject matter should be protectable.

In this case, five Native Americans petitioned for the cancellation of registrations relating to the Washington Redskins football franchise on the grounds that "Redskins" is a pejorative term for Native Americans. Notably, this was the second time that this same issue was before the TTAB, the first time the issue was raised was in 1992 in Harjo v. Pro-Football, Inc., 50 USPQ2d at 1743.  In that case, after 7 years of litigation the TTAB ruled in favor of the petitioners and cancelled the registrations, only to be overturned on appeal on a procedural matter. The current case is brought by new petitioners, who filed their petition while Harjo was pending, and action on their petition was suspended until that case was resolved.  It has, since that time, been the subject of litigation before the Office.  Both the 1992 case and the current case hinged on whether the mark really was offensive or not, and did not address constitutional questions relating to free speech which were considered to be outside the competency of the TTAB.  In this case, no doubt in anticipation of further litigation, the board developed an extensive documentary basis for its finding that the term "Redskin" is offensive.  An appeal is expected.

Whether this cancellation of its trademark registrations will affect the ability of Pro-Football to enforce its common-law trademark rights in "Redskins" is another question.  As those rights derive from its extensive market penetration and long use history, enforceability of the marks will probably not be tested for some time.  For trademark owners, or aspiring trademark registrants, this case underscores the importance of consulting a trademark attorney before adopting a trademark, and considering the connotations of a mark. 

For answers to questions about selecting, using and protecting your trademarks, contact me, Andrew Cernota at acernota@mcr-ip.com, or anyone else here at MCR.  Referrals are always appreciated, too! 

About Andrew P. Cernota

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