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Friday, July 11, 2014

When Trade Marks Attack

Native American Petitioners Score a Touchdown Against the Washington Redskins

by Joel Barrett, Senior Associate
For most Australians, a ‘redskin’ is nothing more than a chewy, raspberry-flavoured lolly. But the clue to its original and, in the United States, more common and controversial meaning is in the image of the man wearing a feathered headdress that appeared, until the late 1990s, on the lolly packaging. Since the sixteenth century, when European colonists coined the word to describe the coppery-skinned indigenous peoples they found in the New World, ‘redskin’ has been used as a slang term for American Indians.

Since 1933, it has also been the official name of the NFL team based in Washington DC.

As is often the case with words denoting race or ethnicity, ‘redskin’ can serve as a badge of pride or an ugly slur, with many shades of meaning in between depending on the speaker, the hearer and the context. For decades, many Native Americans have fought hard, both in and out of the courtroom, for the Washington Redskins to abandon what they say is a derogatory and pejorative name. In 2006, five Native Americans petitioned the Trademark Trial and Appeal Board of the United States Patent and Trademark Office to cancel the registrations for six trade marks, each comprising or containing the word REDSKINS in respect of football-related services, that were registered by the team between 1967 and 1990. In a 2:1 decision handed down on 18 June 2014, called Blackhorse after the first-named petitioner, the Board ordered cancellation of the registrations1.

Under American trade mark law, the Board is empowered to cancel any registration for a mark that ‘consists of or comprises … scandalous matter; or matter which may disparage … persons … or bring them into contempt, or disrepute2’.  Under the accepted test for disparagement, the Board was first required to determine the meaning of REDSKINS in the context of the trade marks and the services in respect of which they are registered, and then to decide whether that meaning, in the view of a ‘substantial composite’ (which need not be a majority) of Native Americans at the time the registrations were issued, disparaged Native Americans.

In relation to the first question, the majority of the Board held that REDSKINS clearly alludes to American Indians. While there is no natural connection between football and American Indians, the team adopted Native American imagery in its branding (including two of the trade marks in issue), uniforms, marching band and cheerleading (led by the lovely Redskinettes). It was immaterial that REDSKINS may have also developed a secondary meaning as the name of the team, or that the intentions of the team in using the name may be honourable. In relation to the second question, the majority reviewed an enormous amount of evidence – petitioner depositions, expert reports on linguistics and lexical semantics, dictionaries, references in print and film media and various resolutions and letters of protest – and concluded that at least 30% of all American Indians considered ‘redskins’ to be a disparaging term between 1967 and 1990. Since 30% is a ‘substantial composite’, it could ignore the evidence advanced by the Washington Redskins that some Native Americans actually approved of the name during that time.

While the petitioners may have scored a touchdown this time, the game is far from over.

This is not the first time that a group of Native Americans has petitioned for the cancellation of these exact trade marks. Six petitioners did so in 1992, on several grounds including disparagement, and much of the evidence in that case was simply reused in Blackhorse. In the earlier case, Harjo, the Board cancelled the trade mark registrations but that decision was ultimately overturned on appeal on the basis that the marks were not disparaging and, in any case, the petitioners were barred from seeking cancellation because they unreasonably delayed in filing the petition3. There is not enough space in one blog post to explain the legal and procedural complexities of that series of decisions, or how five new petitioners were essentially able to rerun the same case in 2006, but the fact remains that history may repeat itself. In a spirited dissent that is scathing of both the petitioners and the majority judges in equal measure, the single minority judge has armed any appeal court with plenty of ammunition. His primary criticism was that the petitioner evidence, which failed to persuade the appeal court in Harjo and had not been improved in the interim, could ‘most charitably be characterised as a database dump’ with no order, structure or coherence to persuasively establish that a ‘substantial composite’ of Native Americans considered ‘redskin’ to be offensive during the relevant period. It was left to the majority to give the evidence ‘some semblance of meaning’, and they arrived at the 30% figure by applying reasoning that is ‘a house of cards that collapses upon examination’.

And, as the Board repeatedly noted, its jurisdiction extends only to cancelling the trade mark registrations, so the decision does not require the team to change its name or otherwise stop using the word 'redskins'.

Interestingly, NFL Properties LLC owns three trade mark registrations in Australia containing not only the word 'redskins', but the image of a Native American man as well4. This is a partial reproduction of one of them:

We here at Scintilla have to wonder whether an application to have those registrations cancelled would succeed. In Australia, a trade mark registration may be rejected, opposed or cancelled if the mark ‘contains or consists of scandalous matter’5. Although there is no specific ground of disparagement as in the United States, there is no doubt that 'scandalous matter' is sufficiently broad to cover racial or ethnic slurs. However, to succeed in such an action for cancellation, the trade mark would need to cause a significant degree of disgrace, shock or outrage in a not insignificant subset of the Australian population,6 and given the presumably low numbers in Australia of Native Americans or people who appreciate the nuanced meaning of the word, it is unclear whether an 'aggrieved person' would be able to meet that threshold. While the Trade Marks Office instructs that 'marks incorporating racial or ethnic abuse (eg F**K <country or ethnic group name>)' will always be scandalous and should never be accepted for registration, it provides no specific direction in relation to words, like 'redskins', which are not obviously inherently abusive.7

A recent decision of a delegate of the Registrar of Trade Marks in relation to the mark POMMIEBASHER provides the best indication of what an Australian court might do. In that case, the examiner originally refused to accept the mark for registration on the basis that it was offensive, but the delegate held that it was 'merely colourful Australian slang in popular common use' to denote 'a person who is unduly critical of English people', and nothing more.8 The trade mark therefore proceeded to registration, and there are now four registered POMMIEBASHER marks (and one pending application).9 While the delegate accepted that the term could be used in an offensive way, one should not allow such potential conduct to alter the content of the term. The situation may be different, however, for loaded terms where the 'sign cannot be separated from the actions of those associated with it, but that would be a matter of social context'.10 Again, it is unclear whether 'redskins' would be considered such a loaded term in Australia, but there may be a clue in the final argument made by the delegate: 'Nor can it be said that the trade mark POMMIEBASHER, if put into the Registrar of Trade Marks, would reasonably cause any sort of concern among stakeholders or the international community.'11 If an Australian court were to take the views of the 'international community' into account, a decision like Blackhorse may prove very persuasive.

  1. Blackhorse v Pro-Football, Inc. (TTAB Cancellation No. 92046185).
  2. Trademark Act of 1946, 15 USC §§1052(a) and 1064(3).
  3. Harjo v Pro-Football, Inc., 30 USPQ2d 1828 (TTAB 1994); Harjo v Pro-Football, Inc., 50 USPQ2d 1705 (TTAB 1999); Pro-Football, Inc. v Harjo, 284 F. Supp.2d 96, 68 USPQ2d 1225 (DDC 2003); Pro-Football, Inc. v Harjo, 415 F.3d 44, 75 USPQ2d 1525 (CD Cir. 2005); Pro-Football, Inc. v Harjo, 567 F. Supp.2d 46, 87 USPQ2d 1891 (DDC 2008); Pro-Football, Inc. v Harjo, 565 F.3d 880, 90 USPQ2d 1593 (DC Cir. 2009).
  4. Australian Trade Mark Registrations Nos. 338372, 385442 and 448073.
  5. Trade Marks Act 1995 (Cth) ss 42(a), 57 and 88(2)(a).
  6. Peter Hanlon [2011] ATMO 45, [15], [18]–[19].
  7. IP Australia, 'Part 30 Signs that are Scandalous and Use Contrary to Law', Trade Marks Office Manual of Practice and Procedure (2014).
  8. Peter Hanlon [2011] ATMO 45, [42], [47].
  9. Australian Trade Mark Registrations Nos. 1267253, 1566979, 1566982 and 1576917, and Australian Trade Mark Application No. 1576917.
  10. Peter Hanlon [2011] ATMO 45, [46].
  11. Peter Hanlon [2011] ATMO 45, [50].

1 comment:

  1. Great post Joel - fascinating case and I'm very interested in what will happen in the appeal - Rob M