WASHINGTON – Native Americans won a big round Wednesday in their fight against the Washington Redskins pro football team and their moniker which many find to be offensive.
The Blackhorse v. Pro Football, Inc. decision of the Trademark Trial and Appeal Board (TTAB or “Board”) today resolved the joint petition filed at the U.S. Patent and Trademark Office (USPTO) by five Native Americans, who sought cancellation of six federal registrations for trademarks that include the term “Redskins.”
The TTAB — an independent administrative tribunal within the USPTO — has determined, based on the evidence presented by the parties and on applicable law, that the Blackhorse petitioners carried their burden of proof. By a preponderance of the evidence, the petitioners established that the term “Redskins” was disparaging of Native Americans, when used in relation to professional football services, at the times the various registrations involved in the cancellation proceeding were issued. Thus, in accordance with applicable law, the federal registrations for the “Redskins” trademarks involved in this proceeding must be cancelled.
Pro Football. Inc., the respondent and owner of the involved registrations, had asserted as a defense that the petitioners should have been barred from seeking cancellation because the registrations have existed for so long, and been the subject of significant investment. But the TTAB found the defense inapplicable as to the petitioners in this case.
This decision by the TTAB does not necessarily put an end to the larger dispute between the parties, as Pro Football, Inc. may seek review by a federal court of today’s decision. The registrations will remain “on the federal register of marks” and not be listed in the USPTO’s records as “cancelled” until after any judicial review is completed.
What this decision means: if the cancellation of the registrations for the trademarks involved in this case is not appealed or if affirmed following possible review by a federal court, Pro Football, Inc., as record owner of the involved registrations will lose the legal benefits conferred by federal registration of the marks. These benefits of federal registration include:
- the legal presumptions of ownership and of a nationwide scope of rights in these trademarks;
- the ability to use the federal registration ® symbol, and;
- the ability to record the registrations with the U.S. Customs and Border Patrol Service so as to block the importation of infringing or counterfeit foreign goods.
What this decision does not mean: this decision does not, however, require the Washington D.C. professional football team to change its name or stop using the trademarks at issue in this case.
- Losing the federal registration of a trademark does not necessarily mean that the owner loses all legal rights in the mark. This is because trademark rights in the United States come from use of a mark on or in conjunction with goods or services, not merely from the additional, optional step of federal registration.
- The TTAB determines only whether a mark can be registered with the federal government (and thus gain the additional legal benefits thereof), not whether it can be used.
- The mark owner may still have rights in the mark based on use, known as “common law” rights – and those use-based rights may continue to exist even if a federal registration is cancelled.
