House Bill Would Amend Trademark Act To Clarify That ‘Redskin' a Disparaging Term

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By Tamlin H. Bason  

A bill introduced to the House of Representatives on March 20 would amend the Lanham Trademark Act of 1946 to make explicit that use of the term “redskin” as a trademark is disparaging, and thus such marks are not eligible for federal protection.

The Non-Disparagement of Native American Persons or People in Trademark Registration Act of 2013 (H.R. 1278) was introduced by Del. Eni F. H. Faleomavaega Jr. (D-Am. Sam.). H.R. 1278 has nine co-sponsors, including another non-voting member of the House, Del. Eleanor Holmes Norton (D-D.C.).

The bill's findings section states, “Trademarks containing the term 'redskin', or any derivation of the term, should not continue to enjoy the benefits of Federal registration.” The legislation would effectively end federal protection for currently registered Redskins marks by amending both Section 2(a) and Section 14 of the Lanham Act, 15 U.S.C. §§1052(a), 1064.

Section 2(a) prohibits the registration of any trademark that “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 … .”

Section 1064(3) allows for “any person who believes that he is or will be damaged” by a mark registered in violation of Section 2(a) to file a cancellation petition “at any time.”

Native Americans Seek Cancellation of Team's Marks

In early March, the Trademark Trial and Appeal Board held a hearing on whether the Redskins trademarks, as used by the Washington Redskins professional team, was offensive. Blackhorse v. Pro-Football Inc., No. 92046185 (T.T.A.B. hearing held 3/7/13) (45 PTD, 3/7/13). Specifically, the TTAB is considering if the six Redskins registrations should be cancelled pursuant to Section 14(3).

Under Section 14(3), however, the petitioners, a group of Native Americans, must demonstrate that a substantial composite of the relevant population--Native Americans--thought that the marks were disparaging at the time that they were registered.

The marks subject to the cancellation petition were all registered between 1968 and 1992, meaning that the petitioners must rely on decades old evidence purporting to establish that the term was viewed by Native Americans as offensive during the 1960s, '70s, '80s, and '90s.

In a proceeding involving the same record as the Blackhorse proceeding, the TTAB said that those petitioners had met their burden of showing that the terms were disparaging and ordered the marks cancelled in 1999. Harjo v. Pro-Football Inc., 50 U.S.P.Q.2d 1705 (T.T.A.B. 1999). That decision, however, was overturned when the U.S. District Court for the District of Columbia determined that the board's disparagement finding was unsupported by substantial evidence (192 PTD, 10/3/03).

The district court also ruled that the cancellation proceeding was barred by the doctrine of laches based on the fact that the cancellation petition was filed in 1992, some 45 years after the team had begun using the name. The laches holding, but not the insufficient evidence ruling, was affirmed by the U.S. Court of Appeals for the District of Columbia Circuit in two separate holdings (137 PTD, 7/19/05); (93 PTD, 5/18/09).

The D.C. Circuit said that laches begins to run only when an individual reaches the age of majority, but even then, the youngest plaintiff before the court had waited eight years after his 18th birthday to file the cancellation petition. That delay had been unreasonable and allowing the petition to go forward would likely harm the team, the appeals court found.

To avoid dismissal, for laches the Blackhorse petition, filed in 2006, emphasized that each of the petitioners had “only just recently reached the age of majority, the age from which the D.C. Circuit Court of Appeals has determined that laches begins to run” (157 PTD, 8/15/06).

Bill Would Amend Lanham Act

H.R. 1248 would do two things that would make it easier to cancel the Redskins marks.

First, it would amend Section 2(a) to make clear that any mark that uses the term “redskin” to refer to or depict Native Americans “shall be conclusively presumed to consist of matter which may disparage persons … .” The bill, if enacted, would thus prevent the registration of any additional marks that included the term if the mark was intended to be used in commerce with images of, or references to, Native Americans.

The bill would also amend Section 14 by ordering the Patent and Trademark Office to cancel any trademark registrations that include the term “redskin” if the mark is used to refer to or depict Native Americans. The bill would also make those cancelled marks ineligible for renewal.

The bill was referred to the House Judiciary Committee.

By Tamlin H. Bason  

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