Author: Ashley Clever, Contributing Member, University of Cincinnati Law Review
Many currently debate whether or not the Washington Redskins name and logo should be changed for disparaging Native Americans, but a closer look into trademark protection raises questions about the role of the United States Patent and Trademark Office (USPTO) and where this push for change should ultimately come from. A quick search on the Trademark Electronic Search System (TESS) reveals 130 records of trademarks containing the f-word (26 of which are currently being used in commerce). Live trademarks include “F—k You,” “F—k It,” “F—k Yeah,” and, quite possibly the most original, “All You F—n’ Hillbillies Shut the F—k Up,” which claims to be a brand of t-shirts. Numerous comedy shows have poked fun at the trademark controversy, such as the South Park episode “Go Fund Yourself,” in which the characters begin a start-up company using the trademark “the Washington Redskins.” While the controversy is being parodied in the news, it raises very relevant questions of why trademarks exist, what can be trademarked, and when a trademark should be canceled. The USPTO may have had good intentions in cancelling the trademark, but all they succeeded in accomplishing was potentially harming consumers by making it more difficult for the Washington Redskins to prevent companies from producing counterfeiting goods bearing the Redskins logo.
Why Trademarks Exist: Preventing Consumer Confusion
“A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.” Trademark protection seeks to prevent consumer confusion and stops companies from taking a well-known or high-quality brand’s trademark and using the same (or a confusingly similar) mark on their goods or services. Trademark protection focuses on unfair competition and preventing companies from deceiving consumers. To receive protection, a mark must identify the source of a good or service. Generic words cannot be trademarked, as this would unfairly remove use of the word from the public domain. Trademark strength depends on the category of the mark, with fanciful and arbitrary words receiving very strong protection and suggestion or descriptive words receiving the least.
Trademark protection was codified under the Lanham Act in Title 15 of the United State Code in 1946. The Lanham Act provides that “[n]o trademark shall be refused registration unless,” creating a presumption of trademark validity. Under § 2 of the Lanham Act, a mark will not be allowed if it “[c]onsists 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 into contempt, or disrepute.”
Trademarks are registered by the USPTO under 15 U.S.C. § 1052. A registered mark becomes incontestable after five years of use, meaning that if the trademark is ever involved in litigation, a court will presume the trademark is valid. A trademark is considered “live” and will be protected for as long as the mark is used in commerce. Trademark registration brings with it a series of benefits, including public notice of the ownership of the mark (which can become important in litigation), the ability to prevent importation of infringing foreign goods (the main incentive to register a trademark), a listing in the USPTO’s online databases, and the right to use the federal registration “®” sign on the mark. Owners of unregistered trademarks may still bring infringement lawsuits but the validity of their trademarks will be contested.
The Washington Redskins Controversy
The USPTO canceled six federal trademark registrations owned by the Washington Redskins football team in June of 2014 after five Native American petitioners brought a cancellation proceeding against the team. The marks were originally granted between 1967 and 1990, but this was not the first time that the mark has been challenged. The trademark board cancelled the mark’s registration in 1999 only to be reversed on appeal for insufficient evidence of disparagement; the Trademark Trial and Appeal Board rejected subsequent appeals based on the doctrine of laches for unfair delay in bringing the suit.
In the most recent challenge, Blackhorse v. Pro-Football , Inc., younger plaintiffs whose standing was not hindered by laches brought suit to invalidate the mark. The Native American petitioners brought the cancellation proceeding pursuant to § 14 of the Trademark Act, alleging that the term “Redskins” is a racial slur and should be canceled pursuant to the Trademark Act’s prohibition of registering marks that disparage people or institutions. The court’s test for disparagement comprised a two-step inquiry: (1) What is the meaning of the word or phrase in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations? (2) Is the meaning of the marks one that may disparage Native Americans?
While Blackhorse introduced evidence of dictionary definitions of the term “redskins” and movie clips where Native Americans were referred to as “redskins” in a derogatory way, the Washington Redskins asserted that the use of the name has been removed from the Native American meaning of the term, and was selected in an honorable fashion to show respect and admiration for Native American culture. Blackhorse’s evidence of disparagement included the mascott, band uniforms, and the “Redskinettes” dance team outfits, which at times have included Native American headdresses and garb in an allegedly derogatory nature. Blackhorse stated:
The term REDSKINS is not and has never been one of honor or respect, but instead it has always been and continues to be a pejorative, derogatory, denigrating, offensive, scandalous, contemptuous, disreputable, disparaging and racist designation [and] [t]he use of this registered service mark identified in Exhibit B [the Washington Redskins logo] to this resolution by the Washington Redskins football organization, has always been and continues to be offensive, disparaging, scandalous, and damaging to Native Americans.
The Trademark Trial and Appeal Board ultimately found that the name was disparaging because the services had not removed the Native American meaning from the term, and the honorable intent in the manner of use of the term was irrelevant. However, the Board clarified that they only have authority to cancel the registration of the mark and cannot prohibit use of the trademark in commerce.
The Washington Redskins appealed the Board’s ruling invalidating the mark, stating that the trademark board “improperly penalized the Washington Redskins based on the content of the team’s speech in violation of the First Amendment” and that the team “has been unfairly deprived of its valuable and long-held intellectual property rights in violation of the Fifth Amendment.” They questioned the Board’s ability to decide what makes a term racist or vulgar and argued that they were penalized unfairly based on the content of the team’s speech. The team argued that the term “Redskins” in this context is not disparaging, but is associated only with their status as a national football team. They posited that the mark is not likely causing consumer confusion—main purpose of the Lanham Act—because the NFL team is well-known and because no one sees the name or logo and believes that the mark is referencing a Native American tribe.
For the mark to be sufficiently derogatory, it must be considered offensive in the use of the mark, meaning that those who see the football team’s name or logo feel that the use of the word “Redskins” is immediately offensive in that context. While the Washington Redskins argue that the term was selected out of admiration and honorable intent, many Native Americans are still immediately offended by the use of this disparaging word, which they deem a racial slur, even when it is used to refer to a football team. While most people would agree that the term “redskins” on its own is derogatory, whether or not “Washington Redskins” has derogatory meaning under this context is an opinion that could vary from person to person. There is no bright-line rule for what constitutes a “derogatory connotation” that requires trademark cancellation. This, in turn, creates confusion, uncertainty, and most notably—controversy.
The Aftermath of Cancellation
While both sides of the controversy have cogent arguments, the Trademark Trial Appeal Board asserted authority only to cancel the mark’s registration, not to prevent use of the mark in commerce. Taking away a company’s trademark registration does not force the company to change their name, but only prevents them from policing infringing goods that are imported into the United States. This means that knock-off brands will be able to sell Washington Redskins t-shirts and memorabilia to unassuming fans who believe they are just getting a great deal. When consumers realize their t-shirt logo is slightly skewed and the goods are counterfeit, they will have to file a lawsuit to recover the amount they paid, and most consumers are unlikely to actually file suit over such a small item. The only effect this decision will have is to allow goods with infringing “Washington Redskins” marks from sources other than the NFL team to pass through U.S. Customs and be sold in commerce. Once the goods are sold, the Washington Redskins can file a trademark lawsuit against the counterfeit sellers, but there will be no way to police the goods before they are sold to consumers. Ultimately, the people who benefit from the trademark cancellation are not Native Americans or outraged fans, but copycat producers of knock-off goods who can now prey upon consumers much more easily.
The speculated costs for the Washington Redskins to change their name would be around $5 million, which does not include the cost to rebrand and re-publicize the new team name and logo. Because the team will likely continue to use that name, by canceling the Washington Redskin’s trademark, the USPTO has simply made it harder for consumers to ensure they are purchasing authentic goods. And because the goods (usually t-shirts, jerseys, and other memorabilia) are often low-cost items, the average consumer is not likely to bring a lawsuit to recover damages from the companies producing counterfeit Redskins items. The USPTO may have had the best of intentions, but all they accomplished was to aid the production of counterfeit goods and harm the consumers they are charged with protecting. Ultimately, because the First Amendment guarantees the team’s freedom of speech, the only entity who can effectuate actual change to completely discontinue the use of the name and logo is the Washington Redskins themselves.
Where Does this Leave Other Sports Teams?
The Washington Redskins is not the only sports team using a potentially disparaging trademark or mascot. Other teams, such as the Cleveland Indians (whose mascot is Chief Wahoo), Chicago Blackhawks, Kansas City Chiefs, or Atlanta Braves may come under closer scrutiny in the near future. Some teams, such as the Florida State Seminoles, have been endorsed by the tribe they represent. After all, assuming that teams choose a mascot that they would like to emulate, they are not necessarily using the mascot in a demeaning fashion. The Seminole tribe helped Florida State University’s boosters create the costume for their mascot Chief Osceola, increasing awareness of the tribe’s rich history and traditions by incorporating them into the dress as well as in halftime shows in which Chief Osceola rides bareback to midfield to rile the crowd.
For other teams, like the Cleveland Indians or Atlanta Braves, it is not quite clear whether their trademark is permissible or offensive. While opinions remain divided, change should not be forced by the USPTO, but rather should come from the sports organizations responsible for the teams—the National Football League, Major League Baseball, National Hockey League, and other similar associations. Until a team is willing to changes its name and logo on its own, removing its trademark protection will only harm the consumers the USPTO seeks to protect.
 See Trademark Electronic Search System (TESS), United States Patent and Trademark Office, http://tmsearch.uspto.gov/bin/gate.exe?f=searchss&state=4807:rnlzwd.1.1 (Oct. 11, 2014). The actual trademarks contain the full word, but they have been edited for this discussion.
 Go Fund Yourself, South Park Studios, http://southpark.cc.com/full-episodes/s18e01-go-fund-yourself (Last visited Oct. 11, 2014). Satirical skits have also appeared on The Colbert Report and The Daily Show.
 What is a Trademark of Service Mark?, United States Patent and Trademark Office, http://www.uspto.gov/trademarks/basics/trade_defin.jsp (Jan. 11, 2010).
 15 U.S.C. §§ 1051 et. seq., “The Lanham Act,” enacted by Congress in 1946 under the Commerce Clause. See Lanham Act, Cornell University Law School, http://www.law.cornell.edu/wex/lanham_act (Last visited Oct. 10, 2014).
 A trademark must identify the source of a good or service, however, a mark may be source-identifying even if consumers do not associate the mark with a particular source.
 Fanciful words are words that are completely fabricated, such as Kodak, or Exxon. They are particularly strong trademarks, meaning that no one else will be able to use the mark in commerce because they do not relate to any particular product. Also very strong are arbitrary marks, or the use of distinguishing characteristics that have no correlation to the product or services they are being used for, such as Apple computers. Suggestive marks are indirectly descriptive of a product or service and do not receive as strong of protection, as other companies may have similar trademarks for products in other areas. Suggestive marks include Chicken of the Sea tuna and Coppertone tanning lotion. Descriptive marks identify a characteristic or quality of the goods that it attaches to, such as describing the color, function, odor, or ingredients. Descriptive marks are required to have a secondary meaning or consumer association with the mark in order to be protected. Descriptive marks include 7-11, which began as a mark describing the store hours but is now thought of as a store name, or American Airlines, which is not only descriptive of the type of airline but is associated with a brand name. Generic trademarks can never be protected, such as trademarking the word Apples to refer to the fruit. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2nd Cir. 1976) (articulating the four categories of trademark protection, holding that use of the word “safari” had become generic for use in clothing and hats but was a unique valid trademark when describing shoes and boots).
 The Lanham Act is older than copyright protection, codified in 1976 and patent protection, codified in 1952. See 35 U.S.C. “The Patent Act” and 17 U.S.C. “The Copyright Act.”
 15 U.S.C. § 1052.
 15 U.S.C. § 1052(a).
 See Lanham Act § 32, codified at 15 U.S.C. § 1114.
 Trademark protection could, in theory, be perpetual if the trademark is continuously used to represent the brand in commerce. A trademark is considered “dead” once it is no longer being used.
 Frequently Asked Questions About Trademarks, United States Patent and Trademark Office (Apr. 23, 2013), http://www.uspto.gov/faq/trademarks.jsp#_Toc275426680.. Owners of unregistered trademarks, however, may still bring infringement lawsuits against anyone using a mark that is likely to cause confusion, mistake, or deception, and may brand the mark using the “TM” sign. Id.
 Id. To prove they have a valid trademark, a party must prove that they have a source-identifying mark that is currently used in commerce and that the mark is not generic, but is fanciful, arbitrary, or suggestive. See supra, note 6.
 Pro-Football, Inc. v. Harjo, 415 F.3d 44 (D.C. Cir. 2005). Laches is an equitable doctrine to prevent a party from bringing litigation in an untimely or delayed manner.
 Blackhorse v. Pro-Football, Inc. Trademark Trial and Appeal Board, June 14, 2014, http://ttabvue.uspto.gov/ttabvue/v?pno=92046185&pty=CAN&eno=199.
 15 U.S.C. § 1064(c)
 Id. See also 15 U.S.C. §1052(c).
 15 U.S.C. § 1052(a).
 Pro-Football, Inc. v. Harjo, 68 USPQ2d at 1248.
 Id. at 40.
 Washington Redskins Appeal Decision to Cancel Trademark, USA Today, http://www.usatoday.com/story/sports/nfl/redskins/2014/08/14/washington-redskins-appeal-federal-trademark-registrations/14066527/ (August 14, 2014). The First Amendment of the United States Constitution protects the right to freedom of religion and freedom of expression from government interference. See U.S. Const. amend. I. The Fifth Amendment protects against unfair treatment in legal processes. See U.S. Const. amend. V.
How Much Would it Cost to Change the Redskins Name?, Wash. Post, http://www.washingtonpost.com/news/fancy-stats/wp/2014/06/18/how-much-it-would-cost-to-change-the-redskins-name/ (June 18, 2014).
 Florida State Can Keep Its Seminoles, NY Times (Aug. 24, 2005) http://www.nytimes.com/2005/08/24/sports/24mascot.html?pagewanted=all&_r=0.