By David M. Kramer and James Stewart, of DLA Piper LLP
On Thursday, August 14, 2014, the Washington Redskins filed a much-anticipated appeal in the U.S. District Court for the Eastern District of Virginia of a June Trademark Trial and Appeal Board decision which resulted in cancellation of six of the team’s federal trademark registrations containing the word REDSKIN. As previously reported in Re:Marks, the TTAB issued a divided ruling which stated that the Redskin Registrations “must be cancelled because they were disparaging to Native Americans at the time of registration,” in violation of Section 2(a) of the Trademark Act, which prohibits the registration of trademarks that disparage persons or bring them into contempt or disrepute.
The team seeks to challenge the TTAB ruling on the grounds that it disregarded federal case law and the weight of the evidence presented during the TTAB proceeding. Additionally, the team seeks to challenge the TTAB decision on constitutional grounds, namely, that the decision impinges on the team’s right of freedom of speech and that the ruling constitutes an unfair deprivation of valuable intellectual property assets.
The TTAB’s decision to cancel the REDSKIN trademark registrations will not be given effect during the pendency of appeal proceedings. Thus, for the time being, the REDSKINS-formative registrations remain intact on the United States Patent and Trademark Office’s Principal Register.
The team successfully appealed a prior TTAB decision cancelling the same registrations at issue in the present case in an appeal in Federal court in 2003. As such, the team appears to be optimistic about its chances of success in the current appeal. However, the team prevailed in the earlier appeal based primarily on procedural grounds that may not be available in this case. Also noteworthy is the fact that the team has filed this appeal in the U.S. District Court for Eastern District of Virginia, better known as the “rocket docket,” known for its expeditious disposition of matters before it. Therefore, be sure to check back regularly for additional updates as this case will likely develop quickly going forward.
What follows is the Washington Redskins’ official statement, added by Hackney Publications:
“The Washington Redskins NFL team filed its appeal of the split decision of the Trademark Trial and Appeal Board (the “Board”) ordering cancellation of the Washington Redskins’ long-held federal trademark registrations. The appeal is in the form of a complaint, effectively starting the litigation anew, this time in a federal court before a federal judge, and not in the administrative agency that issued the recent split decision.”
“’We believe that the Trademark Trial and Appeal Board ignored both federal case law and the weight of the evidence, and we look forward to having a federal court review this obviously flawed decision,’ said Bob Raskopf, trademark attorney for the Washington Redskins.
“The Washington Redskins’ complaint, filed in the United States District Court for the Eastern District of Virginia, explains why the Court should reverse the Board’s order and properly find that Native Americans did not consider the team name “Washington Redskins” to be disparaging during the relevant time frame of 1967-1990. While the complaint points out the many errors in the Board’s decision, the federal judge may disregard the Board’s decision entirely in conducting its own independent evaluation of the evidence.
“The complaint also asks the federal court to consider the serious Constitutional issues that the Board lacked the authority to address. Specifically, by cancelling valuable, decades-old registrations, the Board improperly penalized the Washington Redskins based on the content of the team’s speech in violation of the First Amendment. The complaint also alleges that the team has been unfairly deprived of its valuable and long-held intellectual property rights in violation of the Fifth Amendment.
“’The Washington Redskins look forward to all of the issues in the case being heard in federal court under the federal rules of evidence. The team is optimistic that the court will correctly and carefully evaluate the proofs, listen to the arguments, and confirm the validity of the Washington Redskins’ federal trademark registrations, just as another federal court has already found in a virtually identical case,’ Raskopf said.
“While the case is in federal court, the Washington Redskins’ federal trademark registrations remain in full force and effect. As always, the Washington Redskins has the right to use its marks and to enforce them against infringers and counterfeiters.”
