Monday, March 28, 2011

TTAB Issues Pre-Trial Order in New REDSKINS Cancellation Battle

The TTAB has issued a nine-page pre-trial order (here) in Blackhorse v. Pro Football, Inc., Cancellation No. 92046185, the latest chapter in the battle over the REDSKINS trademark registrations. A brief review of the prior TTAB and federal court proceedings may be found here. In the Harjo case, the U.S. Court of Appeals for the District of Columbia Circuit ultimately (in 2009) affirmed the district court's ruling that the Section 2(a) disparagement claims of the Native American plaintiffs were barred by laches.

However, back in 2006, a "new" petition for cancellation was filed by six "new" Native American petitioners, including Amanda Blackhorse, seeking to knock out the same six REDSKINS registrations on the ground of disparagement. The petition alleges that "each of the Petitioners ... [has] only just recently reached the age of majority, the age from which the D.C. Circuit Court of Appeals has determined that laches begins to run." [See TTABlog posting here].

Amanda Blackhorse

The parties have entered into a five-page stipulation of facts (here) wherein they agreed to the admissibility of certain evidence from the Harjo litigation. The Board's order sets forth "t]he applicable law as discussed in the Board’s previous decision in Harjo and the decisions by the District of Columbia District Court and District of Columbia Circuit Court of Appeals." Included in the Board's recitation of the law are these points:

6. To determine the referenced group, the Board will look to "the perceptions of ‘those referred to, identified or implicated in some recognizable manner by the involved mark.'"

7. The question of disparagement must be considered in relation to the goods or services identified by the mark in the context of the marketplace.

8. The test for disparagement comprises a two-step inquiry:
a. What is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations?
b. Is the meaning of the marks one that may disparage Native Americans?

9. Both questions are to be answered as of the various dates of registration of the involved marks.

TTABlog comment: The six challenged registrations issued in 1990 or earlier. As I understand it, plaintiffs must demonstrate that a "substantial composite" of Native Americans back in the 1980s would have perceived that use of the term "Redskins" in connection with entertainment services disparaged Native Americans or brought them into contempt or disrepute. How would you go about trying to prove that?

By the way, if a mark that has been registered can later become generic, why can't a mark that is registered later become disparaging? Why is the analysis of disparagement limited to the date of registration?

Text Copyright John L. Welch 2009.


At 6:27 PM, Anonymous Anonymous said...

re: why a mark can't later become disparaging akin to genericness:

I'd surmise that it's an equitable compromise. A registrant can proactively protect against genericness by taking certain actions. A formerly benign term, however, may become disparaging through no fault of the registrant as it can't reasonably influence non-trademark disparaging uses.

At 11:07 AM, Anonymous Anonymous said...

completely agree with "anonymous". The owners of that mark can no more keep a mark from becoming disparaging than the owners of Ayds for diet pills could prevent their brand from being swamped by the disease.
On a related note, this goes to the CAFC's misguided logic that found someone off the street was so scandalized by OJ Simpson that they had standing to oppose a trademark application for a commercial product. This latest iteration of the Redskins will generate a lot of lawyer's hours but other than it proves what? That the loser will get another trip to USDC? That the football team will change its name? That a federal judge or the PC Police will order the football team to change its name? I don't think either OJ or the Redskins (and how old are the plaintffs this week) is what Congress had in mind when it included 2a into the Lanham Act. I don't like trademark law being used for partisan political/social purposes. We've had enough precedent that 43(a) is not a consumer protection statute, do we need an amendment that the rest of the Act is not meant at righting the perceived wrongs of society?


Post a Comment

<< Home