Precedential No. 26: In Split Decision, TTAB Orders Cancellation Of Six REDSKINS Registrations Due To Disparagement
In an eagerly anticipated decision, a divided TTAB panel granted a petition for cancellation of six registrations for marks comprising or containing the word REDSKINS, for entertainment services, finding that the marks, at their respective dates of registration, disparaged Native Americans. Judge Bergsman dissented, concluding that the petitioners had failed to prove disparagement by a preponderance of the evidence. Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tsotigh v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014) [precedential].
This is the second time the TTAB has considered a petition for cancellation of these registrations. In the first case (Harjo v. Pro Football, Inc.), the federal courts ultimately ruled that the claims of the Native American petitioners were barred by laches [See TTABlog post here].
Six new petitioners brought the instant cancellation proceeding in 2006 (one later withdrew). Each of these petitioners had recently reached the age of majority, the age from which, according to the D.C. Circuit Court of Appeals, laches began to run. The parties stipulated that the entire Harjo record, with certain exceptions, could be submitted into evidence by way of notice of reliance.
The test for disparagement under Section 2(a) involves a two-part inquiry: (1) what is the meaning of the term in question as it appears in the mark and as the mark is used in connection with the identified goods and services?; (2) does the meaning of the mark disparage Native Americans? The view of the referenced group are determined by the views of a "substantial composite thereof," and that substantial composite need not be a majority. These two questions are to be answered, with regard to each mark, as of the date of registration of the mark (here, 1974 for the earliest registration, to 1990 for the latest).
As to the first question, the Board concluded that the term REDSKINS in the registered marks, when used in connection with professional football, means Native Americans. As to the second question, petitioners submitted two types of evidence: a general analysis of the word (based on dictionary definitions, reference books, and expert testimony), and the specific views of the referenced group (focusing on depositions testimony, newspaper articles, official records, personal letters, and a 1993 Resolution of the National Congress of American Indians (NCAI). The panel majority concluded that "a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with respondent's services during the relevant time frame of 1967-1990."
Therefore, the Board ruled, the registrations must be cancelled.
The Board rejected Respondent's laches defense, holding that as a matter of law, laches does not apply to a disparagement claim regarding a group, and even if it did, Respondent did not prove that it was harmed by any delay in bringing this proceeding.
In dissent, Judge Bergsman concluded that petitioners' evidence failed to show that the term REDSKINS was disparaging at the time of the subject registrations. He pointed to a lack of evidence that the term is disparaging specifically when used in connection with football-related services. The expert testimony was not so directed, and the dictionary definitions that labelled the term "usually offensive" left open the possibility that it was not disparaging when used in connection with sports teams.
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TTABlog note: This case will surely go up on appeal. If Pro Football appeals to the CAFC, will Petitioners exercise their option to proceed by way of civil action in the district court (See Section 1071), where they could add additional evidence to the record in a trial de novo?
Text Copyright John L. Welch 2014.