the evidence to corroborate NCAI membership to justify its opinions as reflective
of those of a “substantial composite” of
the Native American population.
33 Lastly, he
pointed out that, upon his reading of the
record, there was simply insufficient evidence
to support that a substantial composite of the
Native American population, from 1967 to
1990, found the term “redskins” specifically
in connection with the team disparaging.
Effect Felt, Appeal of Decision Initiated,
Who Will Win?
Right now, going into the pending Fourth
35 here is what Pro-Football is
facing, as it is down at present in the game.
Pro-Football can still use “redskins.” The
TTAB decision has the effect of cancelling a
federal trademark registration that, although
not without effects,
36 does not foreclose the
use of any one or more of the trademarks by
37 However, the team must tread
cautiously in its marching up and down the
field going forward when expressing its
intent to continue use of the term, as it has
faced some resulting backlash, with some in
the press expressing their dismay with this
intransigence by simply refusing to use the
“redskins” term to refer to the team.
Team owner Daniel Snyder, no stranger
to controversy, will have to decide how
to line up his team in this Fourth Quarter.
Specifically, he must (i) maximize his chance
of success in having the Eastern District of
Virginia reverse the TTAB decision below,
(ii) present as favorable a record on further
appeal of the eventual decision of the
Eastern District of Virginia to the Federal
Circuit should that come to pass, and (iii)
minimize the probability of the U.S.
Supreme Court granting certiorari, surely
bound to cause even more severe negative
publicity for the team, to finally end the
long dispute once and for all.
What About Other Games?
It would be naïve to believe that this deci-
sion will not be reviewed avidly by interest
groups or marketplace competitors to see
how it could benefit them in their battles
to eliminate (i) perceived reputational
harm from the continued use of alleged
disparaging trademarks or (ii) a competi-
tor’s continued use of a trademark that
could legitimately be considered as dis-
paraging. The key limitation that these
parties intent on using the doctrine will
face is the requirement that the trademark
must be found to be disparaging when the
trademark was registered.
So, for example, Native American
groups will be very hard pressed to succeed
in cancellation of any registered trademarks
that contain the word “Indians,” because
it is quite likely that the term—still used in
common parlance today to refer to Native
Americans—was not considered disparaging when the suspect trademark was registered. In fact, it is quite likely that if the
Washington team changed its name to the
“Indians” or the name of a particular tribe,
the team would not face a viable disparage-ment-based opposition39 or cancellation
claim from Native Americans.
In addition, terms whose connotation
may have shifted with the sands of time
would still be difficult to cancel because
what is relevant is not any contemporary
connotation but rather its connotation at
the time when a mark was registered.
Finally, discovery battles loom large in
any case where this doctrine is implicated in
determining what is or is not a substantial
composite of the relevant group that finds
the suspect trademark disparaging.
40 In any
event, a rarely used doctrine in trademark
law has received a good dusting and
revealed what is a very strong basis of
attacking a trademark.
2. The decision, Amanda
Blackhorse, Marcus Briggs-Cloud,
Philip Gover, Jillian Pappan, and
Courtney Tsotigh v. Pro-Football
Inc., 2014 WL 2757516
(Trademark Tr. & App. Bd. June
18, 2014), is available through
the TTAB’s TTABVUE system at
=. The trademarks cancelled are
Registrations ( 1) No. 0,836,122
(THE REDSKINS, stylized font
shown below), first registered on
Sep. 26, 1967, for “
entertainment services – namely, football
exhibitions rendered in stadia and
through the media of radio of
television broadcasts” in Class 41
[education and entertainment
services], ( 2) No. 0,978,824
first registered on Feb. 12, 1974,
for entertainment services –
namely, presentations of professional football contests, in Class
41; ( 3) No. 0,986,668 (
WASHINGTON REDSKINS and
design shown below), for “
entertainment services – namely, presentations of professional football contests,” in Class 41; ( 4)
No. 0,987,127 (THE REDSKINS and design shown
below), first registered on June
25, 1974, for “entertainment
services – namely, presentations
of professional football contests”
in Class 41; ( 5) No. 1,085,092
(REDSKINS), first registered
Feb. 7, 1978, for “entertainment
services – namely, presentation
of professional football contests”
in Class 41; and ( 6) No.
first registered on July 17, 1990,
for “entertainment services,
namely, cheerleaders who perform dance routines at professional football games and exhibitions and other personal appearances” in Class 41.
3. However, any marketplace participant, in seeking to cancel a
competitor’s trademark through
a petition filed with the TTAB
on the grounds of disparagement, would still have to have
the requisite standing to bring
such an action, which would
require a showing that it
“believes that [it] is or will be
damaged” by the continued
registration of such alleged registered disparaging trademark.
15 U.S.C. § 1064 (Section 14
of the Lanham Act).
4. In re Geller, 751 F.3d 1355
(Fed. Cir. 2014).
5. The provisions of Section 2(a)
of the Lanham Act require the
TTAB, when faced with a peti-
tion to cancel brought under
Section 14( 3) of the Lanham Act
based on Section 2(a), to deter-
mine if the evidence made of
record in a case established that
the trademarked term was dis-
paraging to a substantial compos-
ite of the relevant group at the
time each of the challenged regis-
trations issued. Consorzio del
Proscuitto di Parma v. Parma
Sausage Prods. Inc.,
2d 1894, 1898-99 (Trademark Tr.
& App. Bd. 1992) (citing Section
14( 3)’s language of “registration
was obtained … contrary to the
provisions of … subsection (a) …
of section 2”).
6. Rockwood Chocolate Co. v.
Hoffman Candy Co., 372 F.2d
552 (C.C.P.A. 1979).
7. Pro-Football, Inc. is a Maryland
corporation with a principal place
of business in Ashburn, Va., the
home of the Redskins organization
itself, which owns the “Redskins”
8. Cancellation Proceeding No.
92/021,069, Suzan Harjo,
Redskins Trademark Cancellations