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The United States Patent and Trademark Office’s Trademark Trial and Appeal Board canceled the Washington football team’s trademark registration today in a 2-1 ruling, effectively saying that because the organization’s name is disparaging to Native Americans, no one can legally hold a trademark with that name.
Why is this trademark illegal?
The ruling argues that the trademark violates the Trademark Act of 1946, which states that no trademark should “disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols…”
Does this mean the team has to change its name?
No. But if upheld, it means that the team cannot prevent anyone else from using the team’s name in federal courts. If the decision sticks, it would result in a huge loss in merchandise revenue for the team.
So does this mean everyone can start legally making their own bootleg gear?
Nope—not yet, at least. The team’s trademark attorney said in a statement today that the team would appeal the decision in court. During the appeal process, the team will still legally hold the trademark.
How long will the appeal take?
If the past is any indication, it could take a very, very long time. Another group of Native Americans filed a similar petition to strip the team of its trademark back in 1992. In 1999, the Trademark Board agreed with them and cancelled the mark, much like it did today. But that decision was overturned in the U.S. District Court for the District of Columbia, on the grounds that the there was not enough evidence to prove disparagement and also on the legal concept of laches—-which means the petitioners waited too long to pursue their claim.
This ruling was, in turn, appealed by the petitioners. The U.S. Court of Appeals for the D.C. Circuit took up the case, ruling that the lower court had “applied the wrong standard in evaluating laches.” The appeals court handed the case back down to the lower court to determine if laches actually barred the petitioners from claiming the trademark was disparaging to Native Americans. The court ruled that it did, indeed, prohibit at least one of the petitioners from filing, and that his delay in bringing about the case “demonstrates a lack of diligence on his part.” The appeals court upheld that ruling, though it never addressed the claim that there was not substantial evidence to prove disparagement.
How is this case different from the previous case?
This time around, both the petitioners and the judge who wrote the board’s opinion tried to preemptively prevent the team from invoking the laches defense in an appeal. All of the petitioners were between the ages of 18 and 24 when the petition was filed in 2006, meaning they are all young enough to make it impossible to argue that too much time has passed from the time that they found offense to the trademark to the time that they filed. And the opinion states that it doesn’t even buy the laches defense:
To apply laches to this type of claim contemplates the retention on the register of a mark determined by the Board to be a racial slur, in blatant violation of the Trademark Act’s prohibition against registration of such matter, merely because an individual plaintiff “unreasonably delayed” in filing a petition to cancel…
Second, courts and the Board have routinely held that where there is a broader public policy concern at issue, the equitable defense of laches does not apply
This time around, the petitioners also provided significantly more historical evidence to prove that the team name is disparaging.
How easy will it be for the team to convince a court to overturn the decision?
It’s not going to be easy. Kevin McNeely, a D.C.-based trademark attorney who didn’t work on the case but read the opinion, calls the ruling “unprecedented in terms of the depth and the detail that they go into to make sure they are strong on appeal.” “It really covered a lot of the information that was found to be insufficient in the last appeal,” he says. Today’s opinion was 177 pages. By comparison, McNeely says, most opinions the board issues average 10 to 15 pages.
It would be difficult, according to McNeely, for the team to appeal on the same grounds that it did last time (i.e. by invoking the laches defense and by arguing that there isn’t enough evidence to prove disparagement). He could, however, envision the team taking another route, like saying this infringes on its commercial free speech rights. “I see the Washington [Pigskins] in a tough position,” says McNeely.
What does the team have to say about this?
The team’s response is as expected. “We’ve seen this story before. And just like last time, today’s ruling will have no effect at all on the team’s ownership of and right to use the [Pigskins] name and logo,” Bob Raskopf, the trademark attorney for the team, said in a written statement. “We are confident we will prevail once again, and that the Trademark Trial and Appeal Board’s divided ruling will be overturned on appeal. This case is no different than an earlier case, where the Board cancelled the [Pigskins]’ trademark registrations, and where a federal district court disagreed and reversed the Board.”
Read the full ruling here:
Illustration by Carey Jordan