Group seeks cancellation of pro-football team mark
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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JAntonelli
Jeffrey Antonelli is a member of the federal trial bar of the Northern District of Illinois and is admitted to numerous federal courts around the country. He has been a civil litigator nearly 25 years in a broad range of actions representing corporations and individuals as plaintiffs and defendants in state and federal court. Jeffrey has been interviewed by the media many times, including Bloomberg BNA, NBC, The New York Times, Chicago Lawyer, Chicago Tribune, and the longstanding lawyer’s publication Chicago Daily Law Bulletin. Prior to forming Antonelli Law Ltd. in 2007 Jeffrey worked for several litigation boutiques in Chicago’s Loop as well as a full service firm. His litigation experience includes hotly contested issues in intellectual property, business, insurance, and consumer fraud. He is an adviser to the Illinois Board of Higher Education Advisory Council for Private Business and Vocational Schools (PBVS), and was a member of the Illinois State Bar Association Education Law Section Council from 2012-2013. Jeffrey is especially proud of his work representing hundreds of students defrauded by improperly accredited educational institutions, including as certified class counsel. Before attending law school, Jeffrey was interested first in business, and then in biomedical ethics. These interests led him to graduate from the nation’s largest philosophy department at Loyola University in Chicago, where some of his favorite (and most challenging) subjects were cognitive science and philosophy of science. During college he held positions at the University of Chicago’s Ben May Institute; as a medical assistant for a University of Chicago foot and ankle surgeon; and volunteered in the emergency room at the University of Chicago Hospitals. These experiences led to studying health law at the DePaul College of Law where Jeffrey earned his law degree and a certificate in health law. At that time DePaul’s Institute for Health Law was consistently ranked in the top 10 health law specialty programs nationwide. During law school Jeffrey immersed himself in studying the practical and public policy aspects of health care through internships at the American Medical Association in Chicago, and on Capitol Hill at the Governmental Relations Office of the Association of American Medical Colleges in Washington, DC. Jeffrey has concentrated in civil litigation throughout his legal career, and is a member of the federal trial bar of the Northern District of Illinois, the Central District of Illinois federal court, and all federal courts of Colorado, Wisconsin, Michigan, and Indiana. In addition, he is a member of the DuPage County Bar Association and the Illinois State Bar Association. Jeffrey prides himself on his strong personal ideals, passionate, ethical advocacy, and working hard to bring the best possible results for his clients. He also maintains a special interest in cases involving fraud. Whether due to good parenting, his family’s law enforcement employment, undergraduate studies in philosophy including ethics, or a fortuitous outcome of good breeding, one essence of Jeffrey’s character is a drive to root out the truth behind fraudulent practices.