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We sat with Attorney Gregg Zegarelli, Esq. to discuss the controversial topic of the Washington Redskins trademark registration cancellation in light of the ruling last week by the United States Patent and Trademark Office in Amanda Blackhorse et. al. v. Pro-Football, Inc.

This particular trademark, "Washington Redskins" has special social and political components.  Even more so, a "famous" trademark is a special type of brand, described in law as a brand that is widely known through the general consuming public of the United States; that is, if you walk into a supermarket and ask about iPods, Disney and the Washington Redskins.  We're talking about the cancellation of what is probably a "famous" trademark that has been used for generations, based upon, for many, a new social awareness.

Among other defenses, the owners claimed "laches," which is the legal term for "waiting too long to file a complaint."  The USPTO cancelled the registrations, and it will now presumably be decided on appeal to the judicial system.

The USPTO Opinion is available online at the USPTO and reproduced on our website for public convenience.

Trademarks are developed by actual usage in the marketplace.  You do not need to register a trademark.  Courts, being the judicial branch of government, protect brands, reputations and the likelihood of market confusion as a matter of judicial common law in addition to violations of statutes.  Bottom line: a "registration" of a trademark with the USPTO is optional.

Registering a trademark, pursuant to legislative laws, offers significant benefits, but registration is not required.  Therefore, the cancellation of a registration does not cancel the trademark; it only cancels the "registration" of the trademark.  This rule of intellectual property is similar to the rule of real property.  If I give you a deed to land and you accept it, you own the land; recording the deed is actually optional—important for many reasons—but legally optional to own the land.

The only way to stop the Washington Redskins from using the "Redskins" brand in the marketplace is by a court order, not by the USPTO.  The USPTO is an administrative agency without that power.

However, that said, my own experience is that the USPTO tends, for better or worse, to have a more limited experiential view of evidence and law.  Courts are the ultimate repository for resolving most or all disputes in society and draw upon that broad view.  The USPTO has a very narrow scope of view.  Therefore, courts tend to draw on a different experience.  This is part of the system.  Keeping mind that the highly unusual exception aside, all of the attorneys and judges involved in the resolutions are highly educated and trained.  Many of these questions are factually hard questions.

The easy facts might be if someone, today, tries to register a derogatory term for a sports team.  The injured party immediately goes to the USPTO and gets the registration cancelled.  That is an easy one.  You start with a conclusion that the term is derogatory, and there is no offsetting equitable defense of waiting to complain.  But let us look around a bit to assess some of the arguments in this case.

From the view of the owners of the brand, is it reasonable to assume that a national football team wants a ridiculous and weak helmet?  No.  The football team wants a powerful and respected symbol.  The term "Redskins" was intended to cause fear and respect into the opponent.

Now a very natural knee-jerk reaction is to liken "redskins" with "blackskins."  And, as you can read in the Opinion, the claimants and the USPTO used the n-word analogy multiple times.

Maybe, maybe not, but we have to step back a moment.  There is a distinction from the rhetoric.  Notice that I cannot even repeat the n-word that is actually used in the analogy in the Opinion.  Some words are so vile as to not use at all unless you must.

But, the cultural history of the Native Americans is not the same as African Americans.  American Indians were not introduced into this country or culture as slaves.  Derogatory terms relating to African Americans relate back to an old condescending prejudice that the then-powers de facto themselves created.  The n-word is an inherently derogatory slave term.  I can't even say it, it is so repulsive.  And, analogies to that term may be so powerful as to prejudice the assessment of the context.

Apart from how African Americans were introduced into American culture, it is well-documented that African warriors and the Zulu warriors were just as proud and fierce as the American Indians or the European settlers.  The difference is that American culture was introduced to African Americans as slaves, by gunpowder and law.

So, the n-word analogy really does not apply.  A better analogy might be if a football team wants to call themselves the "Blackskinned Zulus," because it uses a color reference in the context of instilling fear and respect.  This is actually a closer analogy.

Let us say there are five people in the room, one of whom is a Zulu.  The four non-Zulus find the term one of respect and power, but the Zulu himself is insulted, rather than proud, and believes the term derogatory.  Such as it is for slander and reputation, derogatory terms and ridicule requires some third-party involvement.  Apart from superficial media sound-bites, the legal question is quite harder than it appears superficially.

There was a Seinfeld episode dealing with a barber shop Native American tobacco totem theme.  Apart from the fact that this episode made it through network clearances, I mention it not because of what may be funny scenes to some people (maybe at the expense of others), but to assess the context of intention in light of social stereotypes and social reasonableness of intentions. 

There are probably a lot of good-person priests who have been cheering at Redskins games for many years without thinking twice about the term as derogatory.  However, as the Opinion points out, the intention of the speaker is not the standard from a legal perspective, only a social and political perspective.

But this is not the first time this question was raised.  It was raised in the Harjo case in which the registrations were ultimately upheld.  Laches, or delays in bringing claims in trademark actions, is very important.  The reason is because you cannot wait and watch someone to build a business and then raise a claim later.  In fairness, the other people using the brand may not have intended the consequence that is claimed (like Seinfeld), and a late claim destroys the value that is the heart of other people's real financial lives.  Even if the use if socially thoughtless, or thoughtlessly insensitive, that is not the question: the question is why did the injured party wait so long to raise an issue.

What is interesting in the case, is that laches is applied differently in cases relating to derogatory terms.  Remember, if the term is not derogatory in the first place, then the defense of laches is immaterial.  A defense only is important if the pre-conditional claim is made successfully.

I want to thank you.  Is there anything you want to add?

The very interesting point is to play out the process if the Redskins lose the case.  If that happens, the registrations are cancelled.  However, the trademark rights are not destroyed.  As I stated, the Redskins still have unregistered trademarks.  These unregistered trademarks still have the presumptive force of both legislative and judicial power for enforcement.

So, let's say the registrations are cancelled, and someone infringes on the intellectual property brand.  The owners can sue in court for enforcement.  But, then, the practical question becomes how a jury or judge will view the power of the brands that are claimed to be derogatory and whether that is proper evidence in the infringement proceeding.

And, even if the Washington Redskins win, ultimately, all in, this is a branding question with significant social and political implications.  Even with a win, the organization will appear to be obdurate, socially incalcitrant, and socially insensitive. 

Accordingly, if the Washington Redskins win again, they still have social and political market issues; if they lose, it is even worse.  Therefore, either way, the Washington Redskins have a very practical dilemma for which a staged and controlled concession to a name change may now be the only way to win the game.