Challenging the Trademark Registrations of the Washington Football Team Federal Bar Association: 17 th Annual D.C. Indian Law Conference November 10, 2015, Washington, D.C. Jeffrey J. Lopez Drinker Biddle & Reath LLP

Section 2(a) of Lanham Act requires USPTO to refuse to register any mark that “[c]onsists of or comprises … matter which may disparage … persons, living or dead … or bring them into contempt, or disrepute.” Nonetheless, examining attorneys approved six registrations for Pro-Football, Inc. containing “redskins,” in 1967, 1974, 1978, and 1990.

Cancellation Petitions  A “person who believes that he is or will be damaged … by the registration of a mark” may “at any time” petition the TTAB to cancel a registration if the “registration was obtained … contrary to the provisions of [Section 2(a)].”  Evaluated at time of registration; intent to disparage not required.  Trademark registration is cancelled, not the trademark itself.

Harjo v. Pro-Football, Inc.  TTAB grants Harjo petition to cancel,  Harjo federal court proceedings last until 2010.

… Meanwhile  Since 1992, examining attorneys have rejected at least 12 registration applications for “redskins” trademarks -Following refusal, PFI has abandoned “Redskins Fanatics,” “Redskins Pigskins,” “Redskins Rooters” and “Washington Redskins 70 th Anniversary Est Limited Edition.” -Suspended applications “Boston Redskins” (NFL Properties, Inc.) “Redskins Broadcast Network” (PFI) “Washington Redskins Cheerleaders” (PFI) “Washington Redskins” for apparel (PFI)

Blackhorse v. Pro-Football, Inc.  Amanda Blackhorse + 4 others file new TTAB petition in  Dormant until 2010, while Harjo pending.  June 2014 – TTAB rules, 2-1, in favor of cancellation.

Pro-Football, Inc. v. Blackhorse August 2014 – PFI files action in EDVA alleging: –No disparagement –Section 2(a) violates First Amendment –Section 2(a) is void for vagueness. –Cancellation would be taking without compensation –Due process –Laches De Novo review and new evidence may be admitted. USA intervened. Parties cross-moved for summary judgment.

Blackhorse Evidence Dictionaries, reference works and contemporaneous news articles 1972 meeting between National Congress of American Indians President, other Native American leaders and PFI President NCAI resolutions Opposition of Native American groups and individuals Expert study that “redskin” was not used in late 20 th c. newspapers to refer to Native Americans, while “Indian” and “Native American” are Examples from movies and books/magazines PFI’s use of marks and name in ways that mock Native Americans

Dictionary Definitions  Webster’s Collegiate Dictionary (1898): “often contemptuous”  The Random House Dictionary of the English Language (1966): “Often Offensive”  Thorndike-Barnhart Intermediate Dictionary (1974): “a term often considered offensive”  Oxford American Dictionary (1980): “contemptuous”  The American Heritage Dictionary of the English Language, 3rd Edition (1982): “Offensive Slang”  Merriam-Webster Collegiate Dictionary (1983): “usu[ally] taken to be offensive”

1972 News article  Article regarding Indian-themed sports team names: “Of course, the names and symbols differ. They range from the name Indians all the way to Redmen and Redskins, and the symbols go from strong and gallant caricatures, to silly war- whooping idiots.” Paul Kaplan, “Do We Defame Native Americans?” The Washington Star (March 17, 1972).

1972 Meeting – NCAI President, Native American Leaders and President of PFI “Yesterday I met with a delegation of American Indian leaders who are vigorously objecting to the continued use of the name Redskins. Instead of detailing the various bases for their objection, I am enclosing a rather full letter which was mailed to me as a prelude to the meeting. It sets out their position quite cogently.” Letter from Team President Edward Bennett Williams to NFL Commissioner Pete Rozelle, dated March 30, 1972, day after meeting.

Blackhorse Evidence Original fight song lyrics (in use until 1972) Hail to the Redskins, Hail Victory Braves on the warpath, Fight for old Dixie Scalp ’em, swamp ‘em We will take ’em big score Read ’em, weep ’em touchdown! We want heap more

PFI’s Position  Some Native Americans have used “redskin” for sports team names.  National Indian high school marching band performed at a Washington-Dallas game in  Evidence regarding “redskin” is not relevant to “Washington Redskins”  Trademark may be cancelled only if it contains matter that actually disparages a majority of Native Americans.  Blackhorse cannot prove case without contemporaneous public opinion survey.

Blackhorse Summary Judgment  The marks contain matter that “may disparage” a substantial composite of Native Americans. -Relied on reference works, scholarly, literary and media references, dictionaries, 1972 meeting, NCAI historic opposition. -Even if some Native Americans do not object to the team name, there is still no question of fact that the marks contain matter that “may disparage.”  Laches does not bar petitions that present issues of broad public concern, and no undue delay.

Blackhorse First Amendment  In re McGinley (cancellation does not affect use). “Furthermore, cancelling the Washington team's trademark may not even be effective, because cancelling a trademark doesn't prevent the team from using it. It does, however, make it easier for other people to disseminate it. So the Trademark Office decision in this case might result in even more use of a distasteful term – not less.” Esha Bandari, ‘You’re Not Wrong, You're Just an A**hole,’ ACLU Blog of Rights (Mar. 6, 2015), (emphasis added).  But making it “easier for other people” to use the words and symbols of their choice means that more speech – not less speech – is legally permitted.

Blackhorse First Amendment  Walker v. Sons of Confederate Veterans (Government Speech).

Blackhorse First Amendment  Open Society v. USAID (conditions on participating in Government program). “[T]he relevant distinction … is between conditions that define the limits of the government spending program – those that specify the activities that Congress wants to subsidize – and conditions that seek to leverage funding to regulate speech outside the contours of the program itself.”  Here, a trademark owner can continue to disparage anyone it wants, using any words or symbols it chooses, without losing the ability to register marks that are not themselves disparaging.

Other Constitutional Arguments  Section 2(a) not void for vagueness -Marsh v. Chambers, no dispute as to what “disparage” means, no inconsistency in application  No due process violation or taking.

What’s next?  In re Tam (Fed. Cir.) (en banc) – October 2 oral argument, decision expected in Spring  Fourth Circuit appeal pending in Blackhorse -Pro-Football filed its brief on October 30 -Blackhorse Appellees to file response on January 14 -Argument likely in late Spring 2016