Washington Lawyer

Taking the Stand: Time to Retire the 'R' Reference?

From Washington Lawyer, June 2014

By Jesse A. Witten


“Taking the Stand” appears periodically in Washington Lawyer as a forum for D.C. Bar members to address issues of importance to them and that would be of interest to others. The opinions expressed are the authors’ own. Jesse A. Witten, an attorney with Drinker Biddle & Reath LLP, represents the petitioners in Blackhorse v. Pro-Football, Inc.


Football player. Illustration by Dan Page/theispot.comChallenging the Trademark Registrations of the Washington Professional Football Team

For decades, Native Americans and others have objected to the name of Washington’s professional football team because, regardless whether any offense is intended, “redskin” is a disparaging term used to refer to Native Americans.[1] Recognizing this fact, at least 28 high schools and two colleges and universities, including Miami University in Ohio, have dropped “redskins” from their sports team names since 1979.[2]

The controversy has received extensive attention over the past year. The National Congress of American Indians (NCAI)—the largest organization of Native American tribes and individuals in the country—and numerous Indian tribes, Native American leaders, political figures, religious groups, prominent journalists, and many other groups and individuals have protested the team’s name. Even President Obama shared his view that opponents of the name have “real, legitimate concerns,” and that it is time to think about a change.[3]

While public discussion has intensified, a long-simmering legal issue is whether trademarks containing the term “redskin” in reference to Native Americans are eligible for federal trademark registration. The federal trademark law known as the Lanham Act bars registration of trademarks that contain matter that “may disparage persons … or bring them into contempt, or disrepute.”[4] Nevertheless, over the years Pro-Football, Inc. (PFI), a closely held company now controlled by Daniel Snyder that owns and operates the Washington NFL franchise, and others have applied to register “redskins” trademarks. Although there is no indication that the examining attorneys at the U.S. Patent and Trademark Office (USPTO) analyzed the nondisparagement requirement, six applications submitted by PFI were approved for registration between 1967 and 1990.

In 1992 a group of prominent Native Americans led by Suzan Shown Harjo, president of the Morning Star Institute and former executive director of the NCAI, petitioned the USPTO’s Trademark Trial and Appeal Board (TTAB) to cancel the six PFI trademark registrations. In 1999 the TTAB ruled in favor of the petitioners in Harjo v. Pro-Football, Inc. and ordered that the registrations be cancelled.[5] Subsequently, however, the U.S. Court of Appeals for the District of Columbia Circuit held that the Harjo petition was barred by the doctrine of laches because the petitioners supposedly waited too long after reaching the age of majority to file their cancellation petition. In 2006, while Harjo was under review by the D.C. federal courts, a second petition was filed by a group of younger Native Americans (to avoid the laches issue). The second petition, captioned Blackhorse v. Pro-Football, Inc.,[6] is pending before the TTAB and awaiting decision.

Since the Harjo petition was filed, the USPTO has considered numerous additional applications for new trademark registrations filed by PFI and others containing the term “redskin” in reference to Native Americans. Between January 1993 and March 2014, USPTO examining attorneys have refused registration of at least 12 such applications on disparagement grounds.

Suspect Origins of the Team Name
The Washington Redskins started in Boston in 1932 as the Boston Braves. At that time, the team played at Braves Field, home of the Boston Braves baseball team (now the Atlanta Braves). The football team’s owners, led by George Preston Marshall, adopted the local baseball team’s name, which was a common practice at the time. In addition to the Boston Braves, NFL teams in the 1920s and 1930s that took their names from existing baseball teams in the same cities included the Brooklyn Dodgers, New York Giants, New York Yankees, Cincinnati Reds, Pittsburgh Pirates, and Cleveland Indians. Other NFL team names were derived from baseball team names, including the Chicago Bears (derived from Chicago Cubs) and the Detroit Lions (derived from Detroit Tigers).

In 1933 Marshall became the sole owner of the Boston Braves and moved the football team to Fenway Park, home of baseball’s famed Boston Red Sox. Sharing a home with the Red Sox, Marshall changed the team’s name to Boston Redskins. Thus, Marshall continued the existing practice of deriving a football team’s name from the local professional baseball team name while keeping his team’s Indian imagery.   

A November 1972 Redskins game program explains: Marshall “started with his team in Boston on Braves Field. When he switched playing sites, he wanted to change names but keep the Indian motif. Since he was now sharing a park with the Red Sox and at the same time liked Harvard’s crimson jerseys, Redskins seemed appropriate.”[7]

PFI has recently stated that Marshall selected the name Redskins to honor the team’s coach, William Dietz, who was hired in 1933 and who held himself out as Native American.[8] This claim is a modern invention. It contradicts the earlier explanation in the team’s 1972 program. And the team was already named the Braves, with an Indian motif selected, long before Dietz was hired to coach. Marshall himself denied that he renamed the team Redskins to honor Dietz or other Indian players. As The Hartford Courant reported in 1933:

George Marshall, owner of the Boston professional football team, today changed its name from Braves to Redskins.

‘So much confusion has been caused by our football team wearing the same name as the Boston National League baseball club,’ he said, ‘that a change appeared to be absolutely necessary. The fact that we have in our head coach, Lone Star Dietz, an Indian, together with several Indian players, has not, as may be suspected, inspired me to select the name Redskins.’[9]

Even more, Marshall’s views on what it means to “honor” an ethnic group deserve no consideration. He was a notorious and open racist who adamantly opposed racial integration. Because of Marshall, the Washington Redskins was the last NFL team to integrate.

The exclusion of African Americans from the NFL ended in 1946.[10] By 1952 the Redskins was one of only two teams without an African American player, and by 1955 the only team. Marshall did not permit an African American on the team until 1962. He relented only because the U.S. Department of the Interior threatened to revoke his lease of the D.C. Municipal Stadium (now RFK Stadium) unless he ended discrimination against African Americans, and only after intervention by NFL commissioner Pete Rozelle.[11]

Further, in presenting professional football games, Marshall mocked Native Americans and their culture in multiple ways. The team’s original fight song lyrics, written by Marshall’s wife, included these mocking lines (as well as a call to fight for “old Dixie”):

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 . . . .

Likewise, under Marshall, the cheerleaders were dressed in Indian-themed outfits with black braided wigs to look like stereotyped Indian women.

In 1972, after Marshall had died, a delegation of Native American leaders, including the president of the NCAI, met with then team president Edward Bennett Williams to object to the team name, the fight song, and the cheerleader outfits. In response, Williams changed the cheerleader outfits and took out the “most offensive” language in the fight song (and replaced “Fight for old Dixie” with “Fight for old D.C.”). The day after the meeting, Williams wrote a letter to Rozelle describing the meeting and stating that the Native American leaders “cogently” explained how the team’s name was racist and pressed for a change. Williams did not change the team’s name, however. 

Disparaging Marks and HARJO
Section 2(a) of the Lanham Act requires the USPTO to refuse to register any trademark that “[c]onsists of or comprises . . . matter which may disparage . . . persons, living or dead . . . or bring them into contempt, or disrepute.” The TTAB has set forth a two-part inquiry to determine whether a mark is disparaging under section 2(a):

1. 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 registrations?

2. Is the meaning of the marks one that may disparage the referenced group?[12]

Further, the TTAB has stated that “[i]n 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.”[13] The views of the referenced group are reasonably determined by the views of a ‘substantial composite thereof.’[14] A substantial composite may be less than a majority of the group.[15] In addition, disparagement is determined as of the date of registration.[16] The TTAB has also held that there is “no practical difference” between matter that may bring one into “contempt or disrepute” and matter that “may disparage” under section 2(a).[17]

Recent TTAB decisions finding disparagement include In re Heeb Media, LLC[18] (affirming refusal to register mark containing the term “Heeb,” which may disparage persons of Jewish descent); In re Geller[19] (non-precedential) (affirming refusal to register mark “Stop the Islamisation of America” on grounds that it is “disparaging to Muslims in the United States”); and In re Simon Shiao Tam[20] (affirming refusal to register mark for “The Slants” on grounds that it may disparage persons of Asian descent).

In 1992 Harjo and six other Native American leaders filed a petition to cancel six trademark registrations of PFI pursuant to section 14(3) of the Lanham Act.[21] Section 14(3) provides for cancellation of a registration granted contrary to section 2(a). As noted, section 2(a) provides that a trademark is not eligible for registration if it “[c]onsists of or contains . . . matter which may disparage . . . persons, . . . or bring them into contempt, or disrepute. . . .” The marks in question were registered between 1967 and 1990, and all contained the term “redskin.”

In its 145-page opinion issued in April 1999, the TTAB ruled in favor of the Harjo petitioners and directed that the registrations containing “redskins” be cancelled. The TTAB held that because the registrations contained the term “redskin” in reference to Native Americans, each of the six trademarks contained matter that may disparage Native Americans or bring them into contempt or disrepute.[22]

After the TTAB’s ruling, in lieu of an appeal to the federal circuit, PFI filed an action against the Harjo petitioners in the U.S. District Court for the District of Columbia pursuant to 15 U.S.C. § 1071(b). On September 30, 2003, the district court entered summary judgment in favor of PFI.[23] It held that the Harjo petition was barred by laches, ruling that the petitioners had waited too long after their 18th birthdays before filing their petition. In the alternative, the district court stated that the TTAB’s decision was not supported by substantial evidence, asserting that the board did not make necessary findings of fact to support its ruling:

[T]he TTAB only made specific findings of fact in two areas—linguistic evidence and survey evidence. These findings are very limited, because in most instances, the TTAB merely drew from the undisputed portions of the record to make these findings of fact. Indeed, the TTAB heard no live testimony and the testimony cited in its opinion merely came from deposition transcripts. For the rest of the voluminous record, the TTAB decided not to make findings of fact, and instead simply cataloged the evidence put forth by both parties.[24]

Because of the TTAB’s supposed failure to make fact findings, the district court severely restricted its review of the record that was before the board:

The Court’s review of the TTAB’s findings of fact is limited by necessity given the paucity of actual findings of fact made by the TTAB. Even though it spent fourteen pages cataloging the evidence in the case, the TTAB made specific findings of fact in only two areas: (1) linguists testimony, and (2) survey evidence. Since the TTAB only made specific findings of fact in two areas, it is only these two areas that are subject to court-scrutiny under the substantial evidence test.[25]

The district court’s critique of the TTAB’s Harjo decision was mistaken and does not accurately portray the board’s thoughtful decision. In Harjo, the TTAB thoroughly and carefully reviewed and weighed the factual record, and fully explained the reasons for its conclusions.

On appeal, the D.C. Circuit did not comment on the district court’s criticism of the TTAB’s fact-finding effort. It addressed only laches. The D.C. Circuit affirmed the district court ruling that laches barred the petition as to six of the Harjo petitioners, and remanded the matter to the district court to consider further whether laches barred the remaining petitioner.[26] On remand, the district court ruled that the remaining Harjo petitioner was barred by laches; the D.C. Circuit affirmed that laches ruling, and the U.S. Supreme Court denied a petition for a writ of certiorari.[27]

The Blackhorse Petition—and Where Things Stand
In August 2006, between Harjo’s two trips to the D.C. Circuit, five young Native Americans—Amanda Blackhorse, Marcus Briggs-Cloud, Phillip Gover, Jillian Pappan, and Courtney Tsotigh—filed another petition to cancel the same six PFI trademark registrations. Because of their younger age, they are presumably not subject to the same laches argument that ultimately doomed Harjo.

The TTAB suspended activity in Blackhorse until the federal proceedings in Harjo were completed. The Blackhorse stay was lifted in 2010, after the Supreme Court denied certiorari in Harjo. Blackhorse is now fully briefed, and the TTAB held a hearing in March 2013. The Blackhorse petition is now awaiting a ruling by the TTAB.

Evidence introduced by the Blackhorse petitioners proving disparagement includes:

  • Dictionaries, reference works, and other written sources that state that “redskin” is disparaging;
  • Evidence regarding the 1972 meeting between the president of NCAI and other Native American leaders and the president of PFI at which the Native American delegation objected vigorously to the team name and demanded a change;
  • Resolutions and other actions of the NCAI opposing the team name;
  • Opposition of other Native American groups and individuals to the team name;
  • Expert testimony that “redskin” was not a term used in late 20th-century newspapers to refer to Native Americans, while “Indian,” “American Indian,” and “Native American” were widely used;
  • Examples of “redskin” used in written sources in a derogatory manner;
  • Examples of “redskin” used in movies in a derogatory manner;
  • Various admissions by PFI and the NFL that “redskin” is a disparaging term; and
  • Examples of PFI’s use of the team name and marks in ways that mock Native Americans and their culture.

The Blackhorse petitioners’ evidence is summarized in Petitioners’ Trial Brief.[28]
Meanwhile, since the Harjo petition was filed, USPTO examining attorneys have ceased approving new applications for trademarks using “redskins” in reference to Native Americans. Examining attorneys have refused to register “redskins” trademarks at least 12 times on disparagement grounds since 1992.[29] PFI was the applicant for seven of the marks. For four of those marks, PFI notified the USPTO that it was abandoning its application rather than seeking further review of the refusal under USPTO procedures.[30]

Legislative Push Barring ‘Redskin’ Registrations
Although USPTO examining attorneys have repeatedly refused to register “redskins” trademarks since 1992, after 22 years of litigation before the TTAB and federal courts there is still no final outcome to the petitions to cancel the six PFI trademark registrations. A bipartisan group of members of the U.S. House of Representatives has decided that Congress should make it plain that the bar on registering marks that contain matter that “may disparage” or “bring persons into contempt, or disrepute” includes, and always has included, marks that contain “redskin” in reference to Native Americans.

Two weeks after the Blackhorse hearing before the TTAB on March 20, 2013, a bipartisan group of sponsors, led by Democrat Eni F. H. Faleomavaega and Republican Tom Cole (a member of the Chickasaw Nation), introduced H.R. 1278, the Non-Disparagement of Native American Persons or Peoples in Trademark Registration Act of 2013. H.R. 1278 would cancel existing trademark registrations containing the term “redskin” in reference to Native Americans, and would also deny registrations for new applications using the term. The bill would make clear that “redskin,” when used in reference to a Native American or group of Native Americans, is deemed “disparaging” under section 2(a) of the Lanham Act. The bill has been referred to the Subcommittee on Courts, Intellectual Property and the Internet of the House Judiciary Committee.

* * *

As controversy continues to follow the Washington football team’s name, the USPTO is obligated by statute to pass judgment on the name. Since 1992, examining attorneys at the USPTO have routinely refused registration of “redskin” trademarks on disparagement grounds. In Blackhorse, the TTAB is currently deciding whether to cancel the six existing PFI trademark registrations using the term “redskin.”

Jesse A. Witten is an attorney with the Washington, D.C., office of Drinker Biddle & Reath LLP. He represents the petitioners in Blackhorse v. Pro-Football, Inc.

 


Notes
[1] Dictionary definitions of “redskin” include: “Offensive Slang. Used as a disparaging term for a Native American,” The American Heritage Dictionary of the English Language, http://ahdictionary.com/word/search.html?q=redskin (accessed March 24, 2014); “usually offensive: American Indian,” Merriam-Webster Online Dictionary, http://merriam-webster.com/dictionary/redskin (accessed March 24, 2014); “Slang: Often disparaging and offensive. A North American Indian,” Dictionary.com Unabridged. Based on the Random House Dictionary, http://dictionary.reference.com/browse/redskin (accessed March 24, 2014); “dated, offensive: An American Indian,” Oxford Dictionaries, http://oxforddictionaries.com/us/definition/american_english/redskin (accessed March 24, 2014); “North American Indian (usually construed as offensive),” The New Lexicon Webster’s Dictionary of the English Language (vol. 2, Lexicon Publications, Inc., 2004); “(slang) offensive term for Native Americans,” http://vocabulary.com/dictionary/Redskin (accessed March 24, 2014); and “Offensive Slang. Used as a disparaging term for a Native American,” http://education.yahoo.com/reference/dictionary/entry/redskin (accessed March 24, 2014).
[2] National Congress of American Indians, “Ending the Legacy of Racism in Sports & the Era of Harmful ‘Indian’ Sports Mascots” (Oct. 2013) at 14. Since 1980, over 2,000 schools have dropped Indian-themed sports team names; roughly 1,000 Indian team names remain. See id. at 8.
[3] David Nakamura, Obama: ‘I’d Think About Changing’ Washington Redskins Team Name, Wash. Post, Oct. 5, 2013.
[4] 15 U.S.C. § 1052(a).
[5] 50 U.S.P.Q.2d 1705, 1739 (TTAB 1999).
[6] No. 92-046185 (TTAB).
[7] Redskins Edition of Pro! Magazine (Nov. 20, 1972) at 5A.
[8] It is doubtful that Dietz was actually a Native American; the United States charged him with falsely claiming that he was a Native American in order to avoid the draft in World War I. See Linda M. Waggoner, “On Trial: The Washington R*dskins’ Wily Mascot: Coach William ‘Lone Star’ Dietz,” The Montana Magazine of Western History (2013) at 24–47.
[9] “Boston Braves Grid Men Become ‘Redskins,’” The Hartford Courant (July 6, 1933) at 15.
[10] Before 1933, a small number of African Americans played at various times in the NFL, but none from 1933 to 1946.
[11] See Thomas G. Smith, Showdown: JFK and the Integration of the Washington Redskins (2011).
[12] See, e.g., In re Heeb Media, LLC, 89 U.S.P.Q.2d 1071, 1074 (TTAB 2008); In re Squaw Valley Development Co., 80 U.S.P.Q.2d 1264, 1267 (TTAB 2006).
[13] Blackhorse v. Pro-Football, Inc., No. 92-046185 (TTAB May 31, 2011) (citing Harjo v. Pro-Football, Inc., 50 U.S.P.Q.2d 1705, 1739 (TTAB 1999).
[14] Id. (quoting Harjo, 50 U.S.P.Q.2d at 1739).
[15] See id; In re Heeb Media, LLC, 89 U.S.P.Q.2d at 1074.
[16] See id.
[17] Harjo, 50 U.S.P.Q.2d at 1740.
[18] 89 U.S.P.Q.2d 1071 (TTAB 2008).
[19] No. 77940879 (TTAB Feb. 7, 2013), affirmed, No. 13-1412 (Fed. Cir. May 13, 2014).
[20] 108 U.S.P.Q.2d 1305 (TTAB Sept. 26, 2013), on appeal, No. 14-1203 (Fed. Cir.).
[21] 15 U.S.C. § 1064(3).
[22] Harjo, 50 U.S.P.Q.2d at 1705, 1748.
[23] See Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 68 U.S.P.Q.2d 1225 (D.D.C. 2003).
[24] Id., 284 F. Supp. 2d at 102, 68 U.S.P.Q.2d at 1230.
[25] Id., 284 F. Supp. 2d at 119, 68 U.S.P.Q.2d at 1243 (emphasis added) (citations omitted).
[26] See Pro-Football, Inc. v. Harjo, 415 F.3d 44, 75 U.S.P.Q.2d 1525 (D.C. Cir. 2005).
[27] See Pro-Football, Inc. v. Harjo, 567 F. Supp. 2d 46, 87 U.S.P.Q.2d 1891 (D.D.C. 2008), aff’d 565 F.3d 880, 90 U.S.P.Q.d 1593 (D.C. Cir.), cert denied 130 S. Ct. 631 (2009).
[28] Blackhorse v. Pro-Football, Inc., No. 92-046185 (TTAB Sept. 6, 2012) (Docket No. 177), available at http://ttabvue.uspto.gov/ttabvue/v.
[29] Information about the registration applications is available at www.uspto.gov.
[30] For the other three marks, the USPTO granted PFI’s request to suspend further proceedings pending the outcome of Harjo. Although the Harjo proceedings are now completed, the agency is presumably suspending further review of the three marks until the conclusion of Blackhorse.

 


 "Redskin" Trademark Applications Since 1992 

Mark Applicant Filing DateDate of Section 2(a) Refusal (Disparagement)Status
"Washington Redskins"PFI8/3/9211/16/92Suspended pending outcome of Harjo
"Redskin Review" Atlantic Publishing Group, Inc. 9/8/921/8/93Abandoned because applicant failed to respond to refusal notice
"Boston Redskins" NFL Properties, Inc. 2/23/947/18/94Suspended pending outcome of Harjo
"Redskins Fanatics" PFI 1/11/9611/18/96Abandoned because applicant filed notice of express abandonment
"Redskins Pigskins" PFI 1/11/9611/18/96Abandoned because applicant filed notice of express abandonment
"Redskins Rooters" PFI 1/11/9611/18/96Abandoned because applicant filed notice of express abandonment
"Redskins Broadcast Network" PFI 8/9/998/29/00Suspended pending outcome of Harjo
"Washington Redskins Cheerleaders" PFI 3/22/018/13/01Suspended pending outcome of Harjo
"Washington Redskins 70th Anniversary Est. 1932 Limited Edition" PFI 3/21/028/27/02Abandoned because applicant filed notice of express abandonment
"Redskin" Red.com, Inc. 8/10/119/22/11Abandoned because applicant failed to respond to notice of refusal
"Redskins Hog Rinds" James Bethel 8/30/1312/29/13Applicant has not yet responded to notice of refusal
"Washington Redskins Potatoes" George Weston 10/15/133/17/14Applicant has not yet responded to notice of refusal