Tag Archives: Redskins

The ACLU’s strange bedfellows

Redskins Wrong But LegalHere’s some news:  The American Civil Liberties Union says the Redskins are wrong, damned wrong — but they’ve got every right in the world to be that way.

They even filed an amicus brief in the District Court in support of the Redskins’ right to be wrong.  Amicus briefs at the trial level are quite unusual.

The ACLU’s brief, and an earlier blog post on its site, both make explicit reference to the appeal of the PTO’s rejection of The Slants’ application to register their trademark, THE SLANTS, and to the inconsistency of the PTO in permitting “reappropriation” of derogatory terms when it comes to certain categories but not others: Read More…

Trademarks, the Redskins and the constitution

The NFL’s brief on the issue you’ve read about everywhere, including here, is now out and about (courtesy of John Welch):

NFL v Blackhorse – The Redskins Brief

Indian givers (part 3)

Redskins British Style

Part one and part two of this three-part post were published earlier this week.

When the PTO’s decision revoking the REDSKINS registrations was affirmed by the TTAB, I asked, as others — including the NFL — have asked, whether such sociological (not to say historicist)  time travel concerning the REDSKINS mark comports with constitutional due process.  It’s a serious question.

Indeed, it seems that when it comes Section 2(a), pretty much anything goes, procedurally, at the PTO, as long as the outcome is “no.”  There’s one category of exceptions, as The Slants noted on their appeal.  And it’s the exception that proves the rule.  It’s hard to see how it can be otherwise when slurs referring to what was once called lifestyle choices have been allowed registration while those referring to ethnicity are not.

Could one answer by saying that the statute doesn’t prohibit disparagement of behavior or, even, perhaps, sexual identity, but it does prohibit disparagement of ethnic groups?

There’s only one problem with that.  Here’s the statute (emphasis added, obviously):

1052. Trademarks registrable on the principal register; concurrent registration No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it–

(a) Consists of or comprises 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 . . .

So, what are we talking about here?  The relevant language is “disparage . . . persons.”  Are ethnic groups “persons”?  Are any groups of persons, persons?

Not according to TMEP 1203.03(a), which explains, based on the cases, that “Section 45 of the Act, 15 U.S.C. §1127, defines “person” and “juristic person” as follows:

The term “person” and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this Act includes a juristic person as well as a natural person. The term “juristic person” includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.

So what gives?  This definition of “person” doesn’t seem to include races, colors, “peoples,” or “nations” in the ethnic sense.

Read More…

“Indian givers” (part 2)

Washington-FredskinsYesterday I ended part one of this post about a proposed law to outlaw any trademark registration rights for the NFL’s Washington Redskins with this question:  Given the offensive nature of the trademark by all accounts and the strong  “political” (not, strictly speaking, congressional) support for such a measure, why didn’t Representative Mike Honda go all the way and propose outlawing any federal enforcement, including in the judiciary and including with respect to common law marks, state-granted registrations or any claim sounding in unfair competition, of any REDSKINS trademark?  Why stop at half-measures such as prohibiting past and future registrations?

I can think of at least three possible reasons.  One is that no one on his staff understands the difference between trademark registration and trademark rights either.  Don’t rule that possibility out — we’re talking about Congress here.

Number two is that such a bill would probably have to go through the Judiciary Committee.  Congressman Honda isn’t on that.  And the Judiciary people — they certainly do understand this stuff, which that raises the third possibility, separate and apart from committee assignments:  Namely, such an idea, no matter how you dress it up, was obviously beyond the pale.  Face it, even in Washington there are some assaults on the Constitution people won’t try, at least out in the open.

Which leads me to my next point:  Registration versus rights?  Really?  Is it really such a trifling thing to shut the door on a party seeking to register its trademark (much less depriving it of a mark it has already been granted)?

This is the point I arguably stumbled over arguing the appeal of the PTO’s rejection of THE SLANTS in the Federal Circuit, as discussed here.  But as we argued in our submissions, and did manage to say on rebuttal during oral argument, the Lanham Act, in its current form, cannot be said merely to give a procedural or ministerial benefit to trademark registrants.  Registration of trademarks does, in fact, have constitutional dimensions not present when the Federal Circuit’s precedent on this question, In re McGinley, was decided:

While many of the benefits conferred by a registration existed at the time of the McGinley decision, the Trademark Law Revision Act of 1988 significantly expanded the substantive rights afforded to owners of federal trademark registrations. See 1 McCarthy on Trademarks and Unfair Competition § 5:9 (4th ed.) One of the more notable amendments in 1988, was the introduction of the new concept of “constructive use” which provides that “[c]ontingent on the registration of the mark on the Principle Register, the filing of an application to register constitutes ‘constructive use’ of the mark. This confers a right of priority, nationwide in effect … .” Id.; see also 15 U.S.C. § 1057(c).

That’s the fact, Jack.  It’s not so much more a dubious proposition to limit the PTO’s ability to register REDSKINS trademarks than to make them unenforceable as a matter of federal law; both are incursions on free speech. Read More…

“Indian givers” (part 1)

Redskins-Logo-Wallpaper-03For years I’ve been complaining that so much of the excitement in intellectual property law jurisprudence these days involves policy-making by judges and the PTO.

Funny thing!  So, as it happens, I was recently quoted in an article in the World Intellectual Property Review on the topic of our old favorite, the Redskins trademark case.  And it went like this:

Few intellectual property lawyers in the US (and elsewhere) will need reminding that professional American football team the Washington Redskins was stripped of six trademarks last year after a decision by the US Patent and Trademark Office’s Trademark Trial and Appeal Board.

The term ‘Redskin’—a slang word for a Native American and variations of which were used in all six trademarks—was deemed offensive.

In response to the ruling, the team filed a lawsuit against the Native Americans who initiated the challenge, in an attempt to keep its trademarks. The Native Americans, unable to dismiss the suit, will face off with the club at the US District Court for the Eastern District of Virginia this year.

Ron Coleman, partner at US law firm Goetz Fitzpatrick, says: “The drafters of the Lanham Act [the US’s federal trademark statute] never considered whether a registration could be revoked retroactively upon a finding that, when applied for, the trademark was not eligible for registration because late-coming petitioners succeeded in proving that it was derogatory of an ethnic group.”

Yes, I said that.  Now, a few things, both of which were pointed out by me in a post I wrote around the same time I was contacted by that reporter.  Well, first, one thing that was pointed out by John Welch:  the writer’s statement that “the Washington Redskins was stripped of six trademarks last year ” is inaccurate:  The Redskins were stripped of registrations, not trademarks.  They can still, and will still, sue your pants off for pretty much everything trademarky they could sue your pants off for before.
ImageChef.com
Secondly, yes, Congress never considered that stuff I said.  The whole of my argument, per my blog post, is this — indulge me here; there’s more to come:

While the goal of avoiding offense by government actions such as trademark registration is laudable, achieving that goal seems more than ever to embroil agencies and judges in deciding highly-politicized and sensitive issues that are arguably not appropriately determined by either. Adding “time travel” to their task only makes it more onerous. . . .

[T]he policy question of whether a registration should be revoked retroactively, after decades of use by the registrant following allowance and evidently with no time limit — as long as the evidence is found to support a contemporaneous finding of disparaging meaning — is probably one that Congress should address. Its application in this case, regardless of the merits under the standards applied by the TTAB, is certainly troubling.

Is what I said.  So now, I wonder, what should I say about this revolting development?: Read More…

Best of 2014: Redskins decision: The present judges the past

Originally posted on June 18, 2014.

I’ve been writing about the dispute over the REDSKINS trademark on this blog more or less since the beginning of the blog itself.

Today a new chapter has been written — or rewritten.  The TTAB has ruled and, not particularly surprisingly, the NFL team called the REDSKINS has been deemed, nunc pro tunc, to have run afoul (along with the Patent and Trademark Office itself) of Section 2(a) by registering a trademark that was disparaging of American Indians.  Several of their trademark registrations (NOT ITS TRADEMARKS) have been ordered to be cancelled.

As I read the opinion I sort of live-tweeted, on my personal account (as opposed to this blog’s Twitter feed) my observations of the key points as I went along, starting with the holding set forth in the introduction.  You can now relive that excitement here, plus read my extra bonus observation at the end of the post:

 

Read More…

A certain NFL team is on the warpath

Sorry about the pun — but then again, I’m not the PTO; then again, too, my attitude toward “scandalous and offensive” ethnic marks is different from that of lots of people, too. This one, in particular, has long rubbed me the wrong way.

Regarding the Redskins appeal of the REDSKINS cancellation, here, courtesy of The Trademark Blog, is the complaint in Redskins v Blackhorse:


Unsurprising:  Great reliance on the issues raised by the dissenting TTAB judge regarding the serious evidentiary problems with the TTAB ruling.  This is the core argument in our Federal Circuit brief on behalf of THE SLANTS.  Also interesting:

  • There’s a cause of action for a determination that Section 2(a) is void for vagueness, which we also argue in the SLANTS brief;
  • The Redskins claim that the ruling, coming so late in the historical game in terms of the history of the REDSKINS trademark, did not merely err in terms of laches, but that due to the long use of the trademark by the team violates the Due Process Clause and the Takings Clause of the Constitution;
  • Particularly interesting:  It’s de novo review by the District Court in Virginia, not an appeal to the Federal Circuit.  A party appealing from a TTAB ruling can, in most circumstances, do either of these.

Did the Redskins take the appeal to the District Court approach due to a perception that, based on its recent track record, the Circuit is inclined to approve 2(a) determinations of scandalous ‘n’ offensive as a rule? Probably not. It probably has more to do with the fact that, unlike in THE SLANTS case, the REDSKINS case is premised on an unusually rich factual record.  The team’s argument is that, given every opportunity imaginable to prove its case, the plaintiffs Blackhorse failed.   Remember that the burden on the  particularly onerous one:  Proving that the REDSKINS marks were disparaging to American Indians at the time they were registered, i.e., 1967-1990.

Trademark lawyer Ron ColemanI don’t have much trouble guessing, even assuming, that the marks were, in fact, disparaging to that group.  Doesn’t it make sense that it would be?  Anyone can see it.

That’s a very different kettle of fish, however, from proving it by a preponderance of the evidence.

On reading the REDSKINS decision, I was not surprised to find that the nature of the “proof” relied on by the TTAB was, as it admitted in its opinion, highly “inferential.”  Given the burden on the plaintiffs, and the profound interests, including bona fide commercial ones premised on a very reasonable presumption of the correctness of an agency’s repeated administrative decision, the idea that the TTAB would be swayed by so much inferential evidence is pretty surprising –

Suprising… Read More…

Redskins’ intractable trademark troubles — or sportswriters’?

Originally posted 2012-01-04 11:22:31. Republished by Blog Post Promoter

I’ve been following the REDSKINS trademark travails since forever.

Well, they’re not over. Or are they?

Live with me in real-time, real-life blogging time.

I got excited by a link on my Google alert for trademark news, to this story in the Washington Post:

As Redskins’ struggles drag on, so does court challenge to name

By Courtland Milloy, Published: January 1

Back in 1992, Washington reigned as Super Bowl champs with high hopes for two in a row under coach Joe Gibbs. That year, a Native American resident of the District, Suzan Harjo, became the lead plaintiff in a lawsuit seeking to change the team’s disparaging name: Redskins.

As the legal battle over the name enters its 20th year, let’s review some highlights of a struggle in which moral victories by the plaintiffs often coincided with demoralizing losses by the team on the field — including dashed hopes of winning another Super Bowl.

So far, so good: Some new development!  Looks like I can post on the seemingly intractable trademark troubles of the Washington Redskins!

But… what’s the new news?  Here’s the last paragraph of the story, which refers to the earlier dismissal of the Harjo case on laches grounds:

2012: Another lawsuit to get rid of the team name, Blackhorse et al v. Pro-Football Inc., will be working its way through the courts, this one from a younger group of Native Americans who cannot be said to have “waited too long to file.”

But they have already waited too long for justice.

So, then, what is the status of Blackhorse that made it newsorthy at the Post?  Well, not much; it is kind of creeping along.  A few weeks ago, the parties filed a joint stipulation of facts in the opposition action pending in the TTAB.  Not a lot to report.

Slow news day? I guess in the sports department, it pretty much always is, in Washington.  But Happy New Year!

Redskins decision: The present judges the past

I’ve been writing about the dispute over the REDSKINS trademark on this blog more or less since the beginning of the blog itself.

Today a new chapter has been written — or rewritten.  The TTAB has ruled and, not particularly surprisingly, the NFL team called the REDSKINS has been deemed, nunc pro tunc, to have run afoul (along with the Patent and Trademark Office itself) of Section 2(a) by registering a trademark that was disparaging of American Indians.  Several of their trademark registrations (NOT ITS TRADEMARKS) have been ordered to be cancelled.

As I read the opinion I sort of live-tweeted, on my personal account (as opposed to this blog’s Twitter feed) my observations of the key points as I went along, starting with the holding set forth in the introduction.  You can now relive that excitement here, plus read my extra bonus observation at the end of the post:

Read More…

Redskins redux 2

Originally posted 2009-06-09 12:37:25. Republished by Blog Post Promoter

I didn’t have a chance to mention that last month, the order denying the legal challenge to the Washington Redskin’s use of its trademark American Indian logo was upheld.

Now I have a chance!

And do the unhappy Indians have a chance?  They think they do.

UPDATE: They don’t (via @ABAJournal).

Redskins redux

Originally posted 2006-08-09 23:33:11. Republished by Blog Post Promoter

Redskins Logo

Remember the Washington Redskins trademark tussle? CNBC reports that it’s back — again — and better than ever. This time the focus is an interesting technical tactic related to an aspect of the case involving the equitable doctrine of laches:

[T]he U.S. District Court of the District of Columbia . . . in 2003 reversed the TTAB’s decision on disparagement. The court also determined that the petitioners were barred by laches, a legal doctrine applied when a court decides that a party has taken too long to assert a right or claim and that the passage of time is deemed prejudicial to an adverse party.

”The way laches works is that it looks at the delay from when the petitioners are roughly 18 years old,” Mause said. Because of the age of many of the original petitioners, the U.S. District Court of the District of Columbia determined that too much time had passed before they filed suit.

In 2005, the U.S. Court of Appeals for the District of Columbia Circuit reversed the lower court’s ruling on the grounds that the youngest petitioner, Mateo Romer, only reached the age of majority in 1984 and, therefore, may not be chargeable with prejudicial delay (laches). The appeals court sent the case back to the district court, ordering it to determine whether Romero’s case is barred by laches. The case is pending. Mause said the firm will continue to fight Romero’s claim.

The six new American Indian petitioners are between the ages of 18 to 24, so laches should not be applicable in their petition. Mause said the new petition will force the courts to look at the real issue.

The trademark “disparagement” claim is a dubious issue in a time when nothing is deemed offensive save for the politically incorrect, but the idea that laches should play into it is fairly hard to fathom. If I were a legal realist I would suggest that the courts don’t want to touch this with a first-down chain*, but readers know me too well to ascribe such a philosophy to Likelihood of Confusion.

UPDATE: The case, glacially, moves again.

*Apologies to foreigners and other non-Americans, native or otherwise. This is a first-down chain.

Football Redskins live to fight another day

Originally posted 2008-09-02 00:01:43. Republished by Blog Post Promoter

This story won’t die — especially judging from the prominence of related words among search terms that reach this redskins-logoblog.  The latest, which we missed when it came out in July and we were otherwise engaged, is that the NFL’s Washington Redskins again prevailed in a lawsuit brought by a group of American Indians, but by all lights not on the central question of whether the REDSKINS trademark should be canceled on the ground that it is “immoral” or “scandalous”:

In a ruling dated June 25 and first circulated [in early July], U.S. District Judge Colleen Kollar-Kotelly ruled that the youngest of the seven Native American plaintiffs waited too long after turning 18 to file the lawsuit that attempts to revoke the Redskins trademarks.

The lead plaintiff, Suzan Shown Harjo, said Friday the group will appeal.

“She ruled as we anticipated she would: for the loophole that would allow everyone to avoid the merits of the case,” said Harjo, president of the Washington-based Morning Star Institute that advances Native American causes.

Harjo and her fellow plaintiffs have been working since 1992 to have the Redskins trademarks declared invalid. They initially won — the U.S. Patent and Trademark Office panel canceled the trademarks in 1999 — but Kollar-Kotelly overturned the ruling in 2003 in part because the suit was filed decades after the first Redskins trademark was issued in 1967.

The U.S. Court of Appeals then sent the case back to Kollar-Kotelly, noting that the youngest of the plaintiffs was only 1 year old in 1967 and therefore could not have taken legal action at the time.

But Kollar-Kotelly’s new ruling rejects that possible argument. She wrote that the youngest plaintiff turned 18 in 1984 and therefore “waited almost eight years” after coming of age to join the lawsuit.

The judge did not address whether the Redskins name is offensive or racist. She wrote that her decision was not based on the larger issue of “the appropriateness of Native American imagery for team names.”

Well, from our point of view, “avoiding” the merits is the right thing for a judge to do when “mere technicalities” actually preclude a court’s legal authority to decide the merits.  But sooner or later, we’re going to have to deal with this claim, and the whole rat’s nest of problems arising from the “immoral and scandalous” provision of the Trademark Act.