Section 2(a) of the Lanham Act
Section 2(a) of the Lanham Act prohibits the registration of a mark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them in to contempt, or disrepute…” (15 USC Section 1052(a)).

This case dates in some ways to the early 1990s, when a similar case was brought as a cancellation action at the USPTO by some Native Americans. The USPTO cancelled the registrations in that case as well, but the case was overturned on appeal. Normally an appeal is taken to the Court of Appeals for the Federal Circuit. Courts of appeals are deferential to findings of fact below.

But a cancellation or opposition can also be “appealed” by demanding a new trial in a federal district court. The League opted for a new trial in the District Court for the District of Colombia, which found that there was laches (delay) in bringing the case, and that there was not enough evidence to support a finding of disparagement.

On appeal, the case was eventually decided by the DC Circuit Court of Appeals on the issue of laches only. In 2006, another case, with younger plaintiffs who would not be barred by laches because they had not been able to file a case before they turned 18, was brought. The parties agreed to rely on the evidence from the original case. The Board has once again ruled to cancel the registrations, albeit in a split 2-1 decision.
 
The standard, according to the Board, is whether the marks were disparaging to a “substantial composite” of Native Americans at the time the marks registered, which was mostly in the 1960s and 1970s. As such the relevant evidence is quite old.

The Board was critical of the paths the case took in the federal courts. For example, the Federal Court in the first case had said it was inappropriate to use trade mark law to achieve social goals. In the recent opinion, the Board noted that social goals was the exact purpose of Section 2(a). In a nearly 100-page opinion, which came out well over a year after the case was argued, the Board said that laches does not apply to a case of disparagement against a group, only a few of whose members are parties to the case.

Noting that laches is an equitable defence, the Board said: “It is difficult to justify a balancing of equities where a registrant’s financial interest is weighed against human dignity. To apply laches to this type of claim contemplates the retention on the register of a mark determined by the Board to be a racial slur, in blatant violation of the Trademark Act’s prohibition against registration of such matter, merely because an individual ‘unreasonably delayed’ in filing a petition to cancel.” The Board further noted that laches should not apply in a matter of public policy.
 
Although the Court of Appeal for the DC Circuit nevertheless applied laches in the first case, the Board notes that this court is no longer in control. A side effect of the America Invents Act of 2011, which pertains mainly to patent reform, is that these cases now go to a different set of federal courts, located in Virginia, which is the location of the USPTO. The majority of the Board reasoned that the new Circuit’s past trade mark opinions indicated that it was more likely to refuse to apply laches on a matter of public interest, such as confusion of the public.

The evidence
The most important among the reams of evidence was the position of the National Congress of American Indians (NCAI) a group purporting to represent the Native American community. The dissenting Board member did not believe that there was sufficient evidence in the record as to what proportion of the Native American population in the 1960-1970 time frame was represented by the NCAI, and noted generally that if the evidence was the same as that rejected by the District Court in the first case, it was presumably also insufficient this time.

Oddly enough, there are number of Native-American high schools that have “Redskins” as their own mascots. The dissenting Board member took note of some of these. Indeed, when this case was filed in its initial iteration in the early 1990s, I was surprised at the time, while driving across the vast Navajo Nation reservation, which is about the same size as the Republic of Ireland, but has only 250,000 residents, to come across a remote, lonely high school with a sign that said something like “Welcome to Red Mesa School District. Home of the redskins”.

A check online revels that the school retains this name and mascot to this day. The dissent referred to it among many others in reasoning that as used in a sporting context, the term was not disparaging to a number of Native Americans in the relevant timeframe.

Case is largely symbolic
The registrations remain in force, and will not be cancelled until all the appeals are over. The Board has the authority only to cancel the registrations, not to dictate whether the league can still use the name. The US strongly recognises common-law rights, and these marks will still be famous and commercially viable, even if the case is ultimately upheld on appeal years hence.

Nevertheless, sloppy reporting by the lay press has resulted in wild speculation that anyone can now make counterfeit REDSKINS goods, that the team must change its name, and so forth.
There is no private cause of action based on Section 2(a), so there is no avenue to sue the league to enjoin use of the REDSKINS marks based on general disparagement. As such this case is largely symbolic, regardless of who ultimately wins the case.

The cancellation decision comes during a time of other public pressure to change the name of the team. The IP Outer Borders Team is studying generally the hot topic of indigenous rights and trade marks.
 
Janet Satterthwaite is a partner of Venable LLP in Washington DC, a member of the MARQUES IP Outer Borders Team and US HouseMarques correspondent.