Challenging the Trademark Registrations of the Washington Football Team

Transcription

1 Challenging the Trademark Registrations of the Washington Football Team Intellectual Property Owners Education Foundation 25 th Annual Conference on United States Patent and Trademark Law and Practice March 10, 2015, Washington, D.C. Jesse A. Witten Drinker Biddle & Reath LLP

2 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.

3 Harjo v. Pro-Football, Inc Harjo petition filed TTAB rules that six registrations should be cancelled PFI files action in D.C. district court D.C. district court grants summary judgment in favor of PFI (2003) D.C. Circuit affirms as to laches except for youngest petitioner (2005) Following remand, district court grants summary judgment (2008) and D.C. Circuit affirms (2009).

4 Blackhorse v. Pro-Football, Inc. Amanda Blackhorse + 4 others file new TTAB petition in Dormant until Evidentiary stipulation relying on Harjo record. June 2014 TTAB rules, 2-1, in favor of cancellation.

5 Blackhorse v. Pro-Football, Inc. Two-part test for disparagement - What is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registration? - Is the meaning of the marks one that may disparage the referenced group? Both questions decided at time of registration. In deciding whether the matter may be disparaging we look, not to the American public as a whole, but to the views of the referenced group. The views of the referenced group are reasonably determined by the views of a substantial composite thereof. Intent to disparage not relevant Laches does not bar petitions that present issues of broad public concern.

6 Pro-Football, Inc. v. Blackhorse August 2014 PFI files action in EDVA alleging: No disparagement No contempt or disrepute Section 2(a) violates First Amendment Section 2(a) is void for vagueness. Cancellation would be taking without compensation Due process Laches February 2015 Discovery closed. Cross-motions for summary judgment June 2015 Trial date.

7 Blackhorse Evidence Dictionaries and reference works 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

8 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

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11 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 warwhooping idiots. Paul Kaplan, Do We Defame Native Americans? The Washington Star (March 17, 1972).

12 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.

13 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

14 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)