Under the Lanham Act, which provides the situations in which a mark can be registered, there are also a number of prohibitions on registration. See Lanham Act § 2(a), 15 U.S.C. § 1052(a). One such bar on registration is a mark that disparages a person, institution, belief, or national symbol—and Native Americans have challenged trademark registrations on this ground in several instances. In particular, challenges over the names of football teams have arisen under this section, with varying degrees of success.
Most recently, a group of Native Americans have challenged the Washington Redskins’ mark. This challenge, which was filed in 2006 and argued in front of the Trademark Trial and Appeal Board in March 2013, is actually the second attempt. The first opposition made its way up to the Supreme Court, where certiorari was denied in 2009, leaving the Federal Circuit’s decision in favor of the mark holder standing.
Lawmakers are also seeking other means of challenging the Redskins mark—this time in the form of a bill introduced in the House of Representatives that would prohibit the term from being subject to trademark protection. The bill is entitled the Non-Disparagement of American Indians in Trademark Registrations Act of 2013, and if passed, would cancel any existing registered marks using the term “Redskins,” and prohibit future registrations.
In this situation, if the bill was passed, the Washington Redskins would not be forced to stop using the name for the football team. However, cancellation of the mark would allow the team’s ability to pursue infringers and allow other parties, such as retailers wanting to produce team apparel for fans, to use the mark without penalty. Historically, the NFL has actively protected its team marks through strict licensing agreements.
The first case relating to the Redskins mark, Pro-Football, Inc. v. Harjo, was successful in front of the TTAB, and resulted in cancellation of the mark. However, that decision was overturned on appeal because the initial challenge should have been barred by laches, and because the TTAB cancellation was unsupported by substantial evidence.
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