Redskins’ Name Issue Supported by Federal Courts, Again in the News

Redskins Trademark Case.

    
    The most interesting trademark case in sports involved the NFL Washington Redskins and that same issue is suddenly on the front page in 2013. In 1995, the Trademark Trial and Appeals Board (“T.T.A.B.”) canceled the six variations of “The Redskins” that had been filed on various occasions up to thirty years before. The basis for the cancellation was that the marks “ may disparage Native Americans or “bring them into contempt, or disrepute.” Harjo v. Pro-Football, Inc, 50 U.S.P.Q.2d 1705, 1749 (T.T.A.B. 1999) (“Harjo II”).  The appeal was heard in the United States District Court for the District of Columbia by Judge Colleen Kollar-Kotelly.  The Judge is careful to indicate that her decision does not settle the issue of whether those trademarks are disparaging but only decides the legal sufficiency of the TTAB’s decision and whether a laches (too much delay) defense is appropriate on the basis of the undisputed material facts.  The Court analyzed the standard to be used in deciding the case and settled upon the “substantial evidence” standard of the Administrative Procedures Act.  This proceeding required the examination of the parties’ motions for summary judgement, oppositions and reply briefs and applied evidentiary standards to the voluminous documentation in this case.  After doing so, the Court concluded that the T.T.A.B.’s decision must be reversed.    

    The decision is one that trademark practitioners should appreciate as the Judge requires that a stripping away of trademark rights is to deny the Plaintiff corporation the benefits of the Trademark Laws.  That this is not to be done lightly is the message sent by Judge Kollar-Kotelly in this case.

    The case that is discussed here is the appeal of a Trademark Trial and Appeal Board (“TTAB”) proceeding that ended trademark protection for the six marks that had been registered by the National Football League team of that name. The case was filed in September 1992 by Susan Shown Harjo and six other Native Americans to cancel the six trademarks because the word Redskins was “scandalous, may disparage Native Americans and may cast Native Americans in contempt or disrepute.” Pro-Football raised several affirmative defenses including First Amendment claims, Fifth Amendment claims, and that the claims, following registration by as much as twenty-seven years, was barred by the equitable doctrine of laches. Each defense was struck by the TTAB.  

    In reversing the TTAB, Judge Kollar-Kotelly methodically analyzed and dismissed each of the TTAB’s positions.  In her eighty-four page decision, she wields the Judicial sword with precision and renders a well hewn, thoughtful, and legally superb decision.
 
    The history of the Redskins as a team and as a trademark is very interesting.  The history is that the team began life in Boston as the Braves  and played in Braves Field where baseball’s Boston Braves played.  The name was changed in 1933 to Boston Redskins by the owner, George Preston Marshall, who had recently become sole owner as his partners dropped out. (How times have changed!) The name was in honor of the team’s coach, William “Lone Star” Dietz, a Native American.

    The team was moved to Washington in 1937 and began using the name “Washington Redskins” and other marks including “Redskinettes,” for its cheerleaders, in 1962.  The team then filed for trademark protection beginning in 1966 and acquired trademark protection for its marks over several years. All trademarks were renewed when appropriate, and, most significant to our purposes here, there were no objections filed at the time of the applications.  

    The first objection came in the form of the instant petition for cancellation. In granting the petition, the TTAB, after lengthy testimony, made two findings of fact.   First, there was the testimony of expert linguists and, second, survey evidence.  The documentation in both areas was voluminous, The most telling evidence from the experts was that “from at least the mid 1960s to the present, the word “redskins”has dropped out of written and most spoken language as a reference to Native Americans.” Morever, “since the mid 1960’s on, the word “Redskins” appeared only as a reference to Plaintiff’s football team.”  

    In discussing the rationale for its decision, the court carefully analyzes the standard to be used for its decision. It concludes that the findings of disparagement shall be reviewed de novo (from the beginning).
Having done so, the court then turns to the TTAB decision and the “ TTAB’s sporadic attempts at findings of fact.”  To make it easy for the reader, the decision discusses the evidence that convinced the TTAB to cancel the registration for thirty pages.  In reversing the TTAB,  Judge Kollar-Kotelly simply exposes the evidence to light and it disintegrates. For example, the linguistic testimony, as mentioned before, showed that Redskins was used only in reference to a football team and the survey results showed mixed evidence that was inconclusive, inadequate statistically, and indicated attitudes in the 1990’s, not the relevant period when the trademarks were first registered.  It is attitudes at the time of registration that are relevant, not attitudes in the late 1990’s. . The evidence used was inadequate for the result reported by the TTAB, but the Judge goes further by allowing the Pro-Football laches defense that the TTAB had dismissed.

     Laches is a very obvious equitable solution to this case. The defense was asserted by Pro-Football but was dismissed by the TTAB on the basis that a laches defense is unavailable in the context of a (Lanham Act) Section 2(a) petition for cancellation; particularly where “a public interest” is vindicated .

    The test for a laches defense was set out in the Courts Memorandum Decision of Dec. 11, 2000.” The doctrine of laches bars relief to “those who delay the assertion of their claims for an unreasonable time.”
  Laches is founded on the notion that “equity aids the vigilant and not those who slumber on their rights.” NAACP v. NAACP Legal Defense Fund, 753 F.2d. 131, 137 (D.C. Cir. 1985) There are three affirmative requirements. under the common law that are modified to fit the procedural posture of this case: (1)The Native Americans delayed substantially before commencing their challenge to the Redskins trademarks;  (2) The Native Americans were aware of the trademarks during the period of delay; and (3) Pro-Football’s ongoing development of goodwill during the period of delay engendered a reliance interest in the preservation of the trademarks.

    The Court characterized the case as “undoubtedly a ‘test case’ that seeks to use federal trademark litigation to obtain social goals.”Trademark Trial and The problem, however, with this case is evidentiary. The Lanham Act has been on the books for many years and was in effect n 1967 when the trademarks were registered. By waiting so long to exercise their rights, Defendants made it difficult for any fact-finder to affirmatively state that in 1967 the trademarks were disparaging.”   

    In this remarkable case, the rule of law has been applied to an important trademark case. We can rest assured that future decisions will be made according to the well established rules that govern the adjudication of intellectual property disputes, which should provide relief for the IP practitioner. .

Article Originally Published in the Trademark Journal.

A Big Week in Sports: Spring Training, NFL, Hockey, NBA, NCAA Tournament

It just occured to me that this may be the most sports intensive week of the year. Where no major championships are on the line, virtually every major sports enterprise is in the news.

First, the NCAA tournament selections will occur tomorrow and fans are eager to see if their team, mine being the Minnesota Gophers, will make the “Big Dance.” Thirty one of the sixty-eight selections are automatic and go conference champions like Belmont of the Ohio Valley Conference, Florida Gulf Coast of the Atlantic Sun Conference, Liberty of the Big South, and Harvard of the Ivy League. The first action is the play-in round with the bottom four automatic teams playing the bottom four at-large teams for tournament spots. The methodology for selecting the at-large teams is a convoluted statistical system that picks teams based on difficulty of schedule, big wins and stuff like that. I think is sounds very random. Because of that, my Gophers may just make it.

Second, we are near the end of baseball’s Spring Training and the World Baseball Classic. As for Spring Training, it is an interesting period but its relevance will disappear on April 1 when the real season starts. As for the World Baseball Classic, I must admit this event is gaining some traction with the media and, it is assumed, fans around the world. With Puerto Rico’s defeat of the USA team, my own interest in the outcome lagged, but my interest in the event increased as this will be a more important event as time goes by.

Third, the NFL has the ability to remain in the forefront of media reports with its free agent period and coming league meetings. The NFL and Vikings ability to dominate the local media is an indication of its overall dominate position. The Vikings dominate by trading a disgruntled receiver, Percy Harvin, and then dominate by signing a free agent ex-Packer, Greg Jennings. Of great interest is the proposed rule change suggested by the Commissioner to make illegal helmet-first contact by a running back outside the “tackle box, ” that area of the field between the tackles and extending a few yards downfield. This is a major change in the way the game is played but is necessary given the concussion problem. This would make my high school football coach, Eddie Willamoski, angry as he thought the way to play was to plant your head in a tackler’s chest like a battering ram.

Fourth, the NBA is heading for playoffs with the unbeatable Heat leading the way. That doesn’t get much play here as our Wolves are well out of it. This has been a very discouraging year for the Wolves, who started well. The loss of All-Star Kevin Love has been devastating, but the loss of a single player should not doom a team that is otherwise solid. so there is a lesson there.

Lastly, hockey is dominating the local news with the Wild in second place in the NHL’s Northwest Division. So the team is playoff bound. Such is the local interest that the NHL is covered on page C8 of the Star Tribune. The big hockey stories are about the University of Minnesota Women’s and Men’s teams that are advancing in the WCHA Tournament. Of these teams, it is the Gopher Women who get the most interest. The women are 38-0, that’s right, 38-0 this year, and are the most dominant team Minnesota has ever had since the First Minnesota stopped Wilcox Confederates at Gettysburg in 1863. It is my favorite team and I think they will continue to win for a long time. Considering in-coming freshmen, this team will improve next year.

We can look forward to the frenetic NCAA tournament starting next week and extending until The Final Four April 6-8. The NHL and NBA playoffs will come with most interest local, as baseball takes over until the World Series, and the NFL season captivates us until the Super Bowl. That will take us into the new year and it all starts again. It is a wonderful time to be a sports fan. Go Gophs

Academy Awards, Spring Training

This is a Sunday Ramblings post in which I will just talk about news of the week. First, this is Oscar night. I was recently told that I have to submit a ballot for the party tonight. This ballot will detail my personal views that I try to enhance with what I think may be the political views of the actual voters. So my pure list, just my thoughts for best picture is Zero, Dark 30, Argo, Lincoln, Django. Zero is a great movie including captivating scenes of a real killing. The characters are wonderful, the action intense, and the same can be said of Argo.  Then Lincoln and Django deal with mid 19th century action, some real as in Lincoln and some totally improbable as in Django. Lincoln focused on our greatest presidents efforts to get the 13th Amendment passed. The characters were very well done and Thaddeus Stevens was brilliantly depicted. Django I liked for the action and it’s absurdity was its appeal. Come on, a Dentist/Bounty Hunter does all this stuff with whom? I pick Argo to win just because it is a cleaner story and does not involve torture and guns, which will numb the already numbed brains of the Academy.  Lewis wins best actor and Jennifer Lawrence wins best actress. Those are the awards that count, let’s see what happens. Politically, Lincoln, for reasons described before, may win everything.
This is also the time of Spring Training and the NFL Combine. For those of you who believe Spring Training is important, it is for the opportunity to get players in shape to play, but 90% of the team rosters are already set so don’t get excited when a fellow who played in the minors hits. 380 in the Spring. If he is not on the roster now, he won’t be in April. There are numerous reasons for this, the first is that Spring Training is the worst possible time to evaluate a player’s talent. First, he may be hot, in shape etc. and his opponents are minor leaguers or major leaguers not playing seriously. The games don’t count and the pitchers he faces are more concerned with throwing their sliders over the outside corner than they are with getting him out. Don’t get excited, in other words, with Spring success.
The NFL Combine is hard to figure out other than an effort by that league to take some headlines from baseball. If the teams haven’t decided who to draft by now, they don’t deserve their jobs. The same rules that apply to baseball spring training evaluation extends to combine evaluations. It is merely another NFL show to fill time after the Super Bowl.
On the political front, we are argung about this sequester issue. The sequester is being pumped up as the worst event in the history of the republic by the administrationn (who proposed it anyway). This is simply not true. It is a reduction of future exependitures that is a very small fraction of the total to be spent. The media, and I am starting to think there are no great intellects there anymore, simply repeats absurdities. This is lamentable, and it won’t change soon. The issue is how much damage will be done before the deal turns, as it surely will.
Finally, from Argo, is the famous quote, “If I am going to make a phoney movie, It will be a phoney hit.” I just love that attitude. Cheers, Clark