Watch: Author Josh Escovedo and trademark law professor Alexandra Roberts delve into the issues around the Redskins name change on The Briefing from the IP Law Blog.
On Monday, July 13, 2020, the ownership group of the Washington Redskins (the “Team”) announced that it will abandon the Redskins team name after nearly 30 years of controversy. The decision, despite what the Team says, is likely the product of societal pressure, which was reinforced by powerful corporations, such as Nike and Amazon, that refused to sell Redskins merchandise because of the Team’s disparaging moniker. Within days of the corporations refusing to sell their merchandise, the Team announced that it would undertake a “thorough review” of its name. Just over a week later, the Redskins announced that the name would be “retire[d].” But before you give the Team too much credit, let’s consider what it took to get here.
It all started with a decades-long battle between Native Americans and the Team. In 1992, Suzan Shown Harjo, president of the Morning Star Institute, and six other prominent Native Americans petitioned the USPTO’s Trademark Trial and Appeal Board (“TTAB”) to cancel the Washington Redskins trademark registrations. The petitioners argued that the marks are “disparaging, scandalous, contemptuous, or disreputable” and therefore not entitled registration. The legal war was waged for seven years before the TTAB judges agreed to cancel the registrations “on the grounds that the subject marks may disparage Native Americans and may bring them into contempt or disrepute.” The victory was, unfortunately, short-lived. The ownership group appealed the decision to the United States District Court for the District of Columbia, and the decision was reversed, citing insufficient evidence of disparagement. Later appeals were denied on the basis of laches, meaning the Native American petitioners waited too long to pursue their rights. The Supreme Court likewise denied certiorari, choosing not to hear the case.
While the Harjo case was still being litigated, a second set of Native Americans, led by Amanda Blackhorse, filed a petition in the TTAB seeking to cancel the Team’s marks on the same grounds. After years of litigation, a panel of TTAB judges voted to cancel the team’s six trademarks in a two-to-one decision. The judges held that the marks were disparaging to a “substantial composite of Native Americans” and supported their conclusion with evidence demonstrating the cessation of use of the term “redskins” to refer to Native Americans in the 1960s.
Despite another setback, the Team remained confident that it would prevail on appeal and that the TTAB’s decision would not impact the Team’s use of the marks. Before we continue, let that sink in. The Team was involved in multiple actions involving its use of the marks where the opposing parties and the TTAB believed the marks were racially disparaging, and the team didn’t seem to care. Instead, the Team treated it as nothing more than a nuisance and vowed to appeal and continue using the marks regardless of their disparaging nature. Talk about oblivious.
The Team followed through on its promise. It appealed the TTAB’s decision to the United States District Court for the Eastern District of Virginia and continued using the marks in the interim. On July 8, 2015, the court denied the Team’s motion for summary judgment and granted the Blackhorse defendants’ motion for summary judgment, holding that the “evidence before the Court supports the legal conclusion that . . . the Redskin Marks consisted of matter that ‘may disparage’ a substantial composite of Native Americans.” The Team, once again dissatisfied with the trier of fact’s decision, appealed the matter to the United States Court of Appeals for the Fourth Circuit. But after the Team filed its appeal with the Fourth Circuit, the Supreme Court agreed to hear a case involving the same issue—the constitutionality of the Lanham Act’s disparagement clause.
In Matal v. Tam, the Supreme Court held that the disparagement clause of the Lanham Act violates the First Amendment’s free speech clause. This ruling caused the Fourth Circuit to vacate the lower court’s order and remand the Blackhorse matter for further proceedings, consistent with Tam, since the lower court’s ruling was predicated on the now-unconstitutional disparagement clause. In other words, the Tam decision saved the Washington Redskins franchise from losing its trademarks and left the Blackhorse defendants with nothing to show for their efforts other than knowing that they fought the good fight.
But even in the absence of Tam, I’m almost certain the Team would have continued its use of the marks. After two decades of litigation exhibiting the racist and disparaging nature of the marks, you would think the Team would have voluntarily changed its name. Yet it seems the Team would have continued to use the Marks despite any governmental cancellation of their trademark registrations. They were only willing to discontinue use of the Marks when some of their primary merchandise distributors took a stand and refused to sell the Team’s products. They can spin it however they would like, but the objective evidence indicates that the decision was financially motivated by fear of lost revenue and the impact to its bottom line.
So now that the Team has announced its decision to retire the Redskins name, what will its new name be? Many people expected the Team to announce the new name simultaneously with the decision to retire the other, but that wasn’t the case. Instead, the Team announced that it is working to develop “a new name and design . . . that will enhance the standing of [the Team’s] proud, tradition-rich franchise and inspire [its] sponsors, fans[,] and community for the next 100 years.” That may be true, but there are also rumors that the announcement was delayed, in part, by a trademark troll. For those of you who are unfamiliar with the term, a trademark troll is someone who registers a mark without the intent to use it. Their goal is usually to sell the application/registration to someone who intends to use it or to extort a licensing fee from the would-be user.
The alleged trademark troll, Philip Martin McCaulay, has applied to register various potential marks that the Team could use as its new mascot, including the Washington Redtails, the Washington Monuments, the Washington Veterans, the Washington Red Wolves, and the Washington Warriors. But according to Mr. McCaulay, he’s not looking to profit from his actions. Instead, he claims that he applied to register the marks to prevent any real trademark trolls from withholding use of the marks from the Team. According to Mr. McCaulay, he just “want[s] them to change the name and [is] embarrassed if [he] did anything that slows that down.” He also claims that he offered to remit the pending applications to the Team for free, but hasn’t heard back. The Team hasn’t confirmed the veracity of Mr. McCaulay’s statements, but it’s possible that he’s not a troll at all. He might just be a loyal fan looking to protect his team. For my own curiosity, I hope we find out, but I’m skeptical that we will since the Team would not likely announce paying for the marks
In the meantime, we have no choice but to sit back and wait for the Team to announce its new mascot. I can’t imagine we’ll be waiting too long since the season, if it happens, is right around the corner. As I said to one of my fellow trademark aficionados, although announcing the decision to retire the former name without announcing the new one may come across as defensive and reactionary, it may allow the Team to build positive anticipation of the announcement without as much focus on the shameful precedent mark. That won’t be the case for everyone, as most of us will not forget how we got here, but it might work on the casual observer. Either way, I’m looking forward to the beginning of a new era and a new team name.