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Native Americans Recover Their Fumble


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A recent decision issued by the Trademark Trial and Appeal Board (TTAB) on June 18, 2014 cancelling six Redskins trademarks has been a major topic of debate around the news and social media. WFLA News Channel 8 in Tampa, FL invited Smith & Hopen’s associate Andriy Lytvyn to discuss the issue from a perspective of an intellectual property law attorney.

Andriy Lytvyn discusses trademark law.Andriy Lytvyn of Smith Hopen discusses the cancellation of the Redskins trademark by the U.S. Patent & Trademark Office.

The Play. A group of Native American petitioners initiated an administrative proceeding seeking cancelation of the federal trademark registrations for six marks that included the term “Redskins” or a derivation thereof. The challenged trademark registrations were awarded between 1967 and 1990. The challengers allege that the federal registrations are void ab initio as they should not have been granted in the first place because, at the time of registration, the marks were disparaging to Native Americans. Federal registration of disparaging trademarks is barred under Section 2(a) of the Lanham Act.

History. A different group of Native American petitioners filed a similar petition in 1992. As a result of that petition, Native Americans scored a metaphoric touchdown when the TTAB sided with petitioners and cancelled the Redskins marks in 1999. Upon a further review that took place during a lengthy appeal process, the U.S. District Court for D.C. ruled a fumble and reversed the PTAB’s decision. The appeal proceeded to the U.S. Court of Appeals for D.C. Circuit, where the Court did not address the issue on the merits, and instead, dismissed the case based on the equitable doctrine of laches finding that the plaintiffs’ delay in filing the petition was impermissibly long because the petition should have been filed shortly after the plaintiffs reached the age of majority.

Fumble Recovery. This time around, the petitioners are a much younger group of Native Americans, and therefore, the doctrine of laches is unlikely to rescue the Redskins trademarks. However, the federal trademark registrations will remain alive until the owner of the marks exhausts all appeal options. This process may last over a decade and may quite possibly go all the way up to the U.S. Supreme Court. The key issue here is this: have the petitioners presented enough evidence to establish that a substantial composite of Native American population found the Redskins trademarks disparaging in the years between 1967 and 1990. The current views Native Americans and the general public hold toward to the controversial term “Redskins” are inconsequential. Regardless of how this legal battle plays out, the NFL team can continue using and enforcing the Redskins trademarks in a foreseeable future.

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