By Debby Winters
On June 18, the Trademark Trial and Appeal Board (TTAB), which is part of the U.S. Patent and Trademark Office, surprised the National Football League, its fans, and the media when it o
nce again canceled six trademark registrations associated with the Washington Redskins football team. The basis for canceling these was that the registered marks are disparaging to American Indians. The June decision was the result of a six-year legal battle between American Indians and the Washington team over the name Redskins.
This was not the first time the TTAB canceled trademark registrations for marks used by the team. Some of the team’s marks have been canceled on the basis that the marks are disparaging. However, after various appeals, the TTAB’s cancellation order was ultimately reversed based on the defense that the petitioners had waited too long to challenge the registrations, this is commonly called laches in the legal community. The cancellation petition, although it ultimately failed to cancel any registrations, did have an effect on Washington’s ability to register its marks going forward. After the petition was filed, the USPTO denied a number of new applications for marks on the basis that they were disparaging.
A section of the Trademark Act states that a trademark is not entitled to registration if it “consists of, or comprises, matter which may disparage … persons, living or dead, institutions, beliefs or national symbols or bring them into contempt or disrepute.” Under this provision of the Trademark Act, the TTAB has refused to register “Khoran” for wine because the Koran proscribes Muslims from consuming alcohol and “The Slants” for an Asian rock band because the name is derogatory. However, it has permitted the registration of “Moonies” for dolls that drop their pants because it does not disparage members of the Unification Church and “Memphis Mafia” for entertainment services because it does not disparage Italians.
The TTAB applied its usual two-part test: (1) what is the meaning of the term in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations? And (2) is the meaning of the term one that may disparage the group identified by the term?
The TTAB determines whether a mark is disparaging at the time the mark is registered, not when the petition is filed. In addition, the mark must be disparaging only from the perspective of the group allegedly being disparaged, not the general public. Moreover, the TTAB looks at whether a “substantial composite” of the group will be disparaged by the mark in question; a substantial composite is not necessarily a majority of the group. Finally, the intent of the mark owner in choosing the mark is irrelevant to the determination of whether a mark is disparaging.
Based on the evidentiary record, the TTAB spent little time on the first prong of the test (what is the meaning of the term in question) in determining that the team’s name is meant to refer to American Indians, because many of the team’s marks contain American Indian imagery, and the team consistently associates the mark with American Indian imagery at games and in marketing materials.