On 18 June 2014, the U.S. Patent and Trademark Office (USPTO) granted a petition to cancel six federal trademark registrations containing the word REDSKINS. These included THE REDSKINS, WASHINGTON REDSKINS, REDSKINETTES and the logo below:
The trademarks had been registered between 1967 and 1990 by Pro-Football, Inc. (the company that owns the franchise for the Washington Redskins team) for entertainment services, particularly presentations of professional football contests (American football, that is, not “soccer”).
A previous attempt to cancel these trademarks between 1992 and 2009, despite initial success but following several appeals in higher courts, ultimately failed on the technical defence of “laches” (there had been unreasonable delay in bringing the petition resulting in prejudice to Pro-Football, Inc.).
Whilst the above was on-going, a new petition was brought by Amanda Blackhorse and a handful of other Native Americans, but suspended pending the outcome of the previous petition. This petition for cancellation was based on the same main ground, namely that the trademarks were barred from registration as they disparaged Native Americans and brought that group of people into contempt, ridicule or disrepute.
The USPTO held that REDSKINS was a racial designation and noted that old dictionary definitions stated it was “often offensive”. It considered evidence including a 1993 resolution of the National Congress of American Indians, which represented approximately a third of the Native American population from 1972 to 1993, that the term was derogatory and offensive for Native Americans.
Accordingly, the USPTO found the term disparaging and ordered the cancellation of the six registrations. This decision only prevents the Redskins from relying on the registrations to prevent others from using the trademarks. It does not prevent them from retaining the name and trademark and enforcing common law rights built up over a significant time. Further, there are still REDSKINS registered trade marks in the UK, EU and other countries. An appeal is planned by Pro-Football, Inc. It remains to be seen whether the franchise will be renamed if this fails.
Blackhorse v. Pro-Football, Inc. (Cancellation No. 9204618, 2014 WL 2757516 (TTAB June 18, 2014)
What is the corresponding law in the UK?
In the UK, what corresponding law would allow either the Intellectual Property Office to refuse registration of an offensive mark or a person offended by a registered trade mark to challenge it?
The Trade Marks Act 1994 prohibits registration of a trade mark if it is contrary to public policy or to accepted principles of morality. Further, any person can apply for the registration of a trade mark to be declared invalid on the ground that it was registered in breach of that section. If successful, the registration shall be deemed never to have been made (but without affecting any past transactions).
- The “public policy” ground is intended to deny protection to marks which could induce public disorder, or increase the likelihood of criminal or other offensive behaviour. This may cover marks which appear to have criminal connotations, e.g. associated with illegal drugs or violence, or which exhibit racial, religious or discriminatory characteristics. When considering the matter, the right to freedom of expression should be taken into account.
- “Accepted principles of morality” requires an assessment of whether a mark would cause outrage or would be likely significantly to undermine religious, family or social values. Distaste is insufficient for an objection.
Some examples of marks that have been accepted or refused under this section are:
- In 1976, HALLELUJAH was denied registration (but that might be decided differently now);
- In 2000, French Connection successfully registered FCUK;
- In 2003, “www.standupifyouhatemanu.com” was denied registration on grounds it was liable to “function as a badge of antagonism”;
- In 2005, an application to register JESUS in the UK was rejected and guidance states it is contrary to public policy (but others have succeeded in the EU);
- In 2011, an application for invalidity against JACK SCHITT failed.
Guidance also suggests that FOOK and BOLOX (morality) and SNUFF MOVIES (public policy) would be objectionable.
The Redskins decision may in time be overturned but the litigation is useful to highlight one of the less common grounds of refusal (or invalidity) for a trade mark registration under UK law.