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August 03, 2015 Practice Points

Judge Rules Against Washington Redskins in Trademark Decision Appeal

By Handel Destinvil

On June 8, 2015, U.S. Eastern District of Virginia Judge Gerald Bruce Lee's affirmed an earlier ruling by the federal Trademark Trial and Appeal Board, and held that the Washington Redskin's team name is ineligible for federal trademark protection under the Lanham Act as it is offensive to Native Americans. The Lanham Act bars trademark protection for names that "may disparage" or bring people into contempt or disrepute.

Redskins President Bruce Allen said the team will appeal the decision. In a statement, Allen said, he was "surprised by the judge's decision to prevent us from presenting our evidence in an open trial" and that he looks "forward to winning on appeal after a fair and impartial review of the case." "We are convinced that we will win because the facts and the law are on the side of our franchise that has proudly used the name Redskins for more than 80 years," Allen also added.

On administrative appeal, the Redskins had argued that cancellation of its trademark infringed on its free-speech rights because it required the government to judge whether the name is offensive. It also contended that there was not enough factual evidence to show that a significant number of Native Americans opposed the name at the time the team registered its trademarks in 1967, 1974, 1978, and 1990.

In rejecting the team's free-speech argument, Lee cited a U.S. Supreme Court ruling last month, Walker v. Texas Division, Sons of Confederate Veterans, allowing the state of Texas to bar depictions of the Confederate battle flag on specialty license plates sought by the Sons of Confederate Veterans. In following that case, Lee said federal law allows the government to exercise editorial control over the content of the trademark registration program, equating trademark registration to government speech as opposed to private speech.

Ray Halbritter, Oneida Indian Nation Representative and the leader of Change the Mascot, a national campaign to end the use of "redskins" as a mascot and NFL team name, issued a statement in response to Allen, which tied into the broader national conversations occurring around the Confederate flag:

If something happening decades ago was reason alone to continue doing it, then America would still have Jim Crow laws and Confederate flags would still be flying on top of state capitol buildings. Bruce Allen's comments perfectly illustrate why the NFL has a crisis on its hands: at a time when America is demanding an end to outdated symbols of bigotry, one of the league's teams insists on continuing to promote, market and profit off an offensive and racist symbol.

In his ruling, Lee ordered the federal Patent and Trademark Office to cancel the registration. The judge made clear, however, that the team is still free to use the name if it wishes, and that the ruling has no effect on the team's ownership of and right to use the Redskins name and logo. Rather, the practical effect of the ruling will be that the team will lose some legal protections related to holding a federal registration of a trademark and have a more difficult time in substantively proving a claim of trademark infringement in the future.

In the interim, the team's trademark registrations will remain valid while the case is appealed.

Keywords: minority trial lawyer, litigation, Washington Redskins, trademark, Lanham Act, NFL, mascot

Handel Destinvil, Esq., is with the Superior Court of New Jersey in Essex Vicinage in Newark, New Jersey.

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