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

Originally posted 2014-12-27 20:12:11. Republished by Blog Post Promoter

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:



Having said all that, I was also contacted by a reporter for a comment on this topic.  I wrote one up, but the reporter told me there was no sense for me to wait for a link; the article would be beyond a paywall.  [UPDATE:  Finally — February 2015 — here’s the article.]  So, going to town, here’s my take.  The reader’s familiarity with my previous (and pending) involvement with the 2(a) issue is assumed.  Having said that, here’s what I say about the REDSKINS decision.

The opinion is remarkably thorough and is ultimately grounded in what appear to be mountains of carefully sifted, weighed and analyzed factual evidence developed through years of litigation.  In this respect it certainly represents, even if arguably at the high end, the sort of careful evidentiary record that ought to form the basis of a section 2(a) denial.  Yet it is significant that the dissenting judge came to a different conclusion from that of the majority about the key issue factual issue as determined by the panel, i.e., whether the registration ran afoul of section 2(a) at the time the mark was registered.

The question of going back in time to make such determinations is inherently rife with problems, and the TTAB did not really wrestle with them.  Arguably it was not within their scope of review to do so.  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.

Moreover, not all section 2(a) refusals merit the level of factual inquiry and careful analysis of evidentiary issues on display in the REDSKINS appeal.  Most applicants have neither as much at stake the Washington Redskins did here nor the budget to apply to defending their registration.  The care and effort invested in the TTAB’s decision here reflected these unusual factors, but unfortunately not every 2(a) dispute that comes to it can expect such well-developed treatment of the issues and evidence.

Finally, the 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.

One more thing:  You know, of course, this ain’t over.


In this space, at least, duly noted and clarified!

By Ron Coleman

I write this blog.

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