A headline-making dispute between the Washington Redskins of the NFL and a group of Native Americans intensified last summer when an appeal board of the US Patent and Trademark Office ruled that the team should be stripped of its trademark protections.

In a 2-1 decision, the board stripped the team of six federal trademarks related directly to the team’s name. The name of the team’s mascot was found to be (in the board’s words) “… disparaging to Native Americans.”

I followed the case closely and I considered that appellate decision would be the last word from the government on the issue. I was wrong.

A federal appellate court recently issued a sua sponte order in the case. This not only vacates a recent court decision in a similar case of disparagement, it forces the court to rehear the case en banc. But that’s not all; this time, they’ll be focusing on whether the ban on culturally-disparaging trademarks violates the First Amendment.

In other words, the constitutionality of banning insensitive trademarks has been called into question.

This is not just huge news in the Redskins case, it would represent a sea change in the way certain trademarks have been handled for nearly four decades.

The Background of the Redskins Case

The dispute between Native people and the NFL team has been going on for decades.

For forty years, a loosely-organized group of people from various Native American groups (including tribal and organizational leaders) have been targeting the title of the Washington, DC football team.

Twenty years ago, this group moved its fight into the courtroom. They started waging legal battles in an attempt to wipe out the team’s federal trademark protections. Their argument – laws prohibiting the trademarking of offensive racial terms should automatically void the trademark for the name “Redskins.”

The issue hit the forefront again this past year, with two major protests at Redskins’ games, one in Minnesota and one in DC.

President Barack Obama publicly urged the team to change their mascot.

Senators and other lawmakers (Senate Majority Leader Harry Reid chief among them) have likewise put public pressure on team owner Dan Snyder to change the name of the team.

So how did all this anger over a sports mascot come to be?

A Timeline of the Redskins Controversy

  • 1860s – The term “redskins,” used by native people to describe themselves, becomes a racial slur used by whites, particularly on the frontier. Here’s an example from a newspaper ad of the time:
    “THE State reward for dead Indians has been increased to $200 for every red-skin sent to Purgatory. This sum is more than the dead bodies of all the Indians east of the Red River are worth.”
  • 1890s – Carlisle Indian School, a team made up entirely of Native Americans, regularly competes with (and beats) college football powerhouses of the day.
  • 1932 – The Boston Braves change their name to the Boston Redskins to fit in better with their stadium-mates, the Boston Red Sox. The team later moves to Washington, DC.
  • 1933 – William “Lone Star” Dietz takes over as head coach of the Redskins, producing a dismal record of 11-11-2 during his tenure. Coach Dietz claimed direct Sioux lineage, and is regularly cited as the inspiration for the team’s mascot. Of course, you have to consider that Dietz was once found guilty by the Federal government of falsifying his native heritage in order to dodge the draft.
  • 1937 – The Washington Redskins win their first league championship, one of five the team has won since its inception.
  • 1963 – Groups of Native American students and protestors begin demanding changes to racist mascot names and traditions.
  • 1964 – “Lone Star” Dietz dies.
  • 1969 – Team owner George Preston Marshall, one of the last to racially-integrate his team, dies.
  • 1970 – Under pressure from Native groups, the University of Oklahoma bans “Little Red,” the team’s unofficial Native American mascot.
  • 1971 – Marquette University gets rid of its Native mascot under similar pressure.
  • 1972 – Stanford University drops its mascot “Indians” in favor of the more neutral “Cardinals.”
  • 1974 – Dartmouth University follows a similar pattern, abandoning its unofficial “Indians” mascot entirely.
  • 1975 – Jack Kent Cooke, a Canadian media personality, takes over ownership of the Redskins. He refuses to meet with Native leaders.
  • January, 1992 – The Redskins win their most-recent Super Bowl.
  • February, 1992 – Patent lawyer Steven Baird contacts activists, suggesting for the first time that they pursue litigation to strip the Redskins of their disparaging trademarks.
  • September, 1992 – Activist Suzan Harjo and six others file the first petition to the US Patent Office asking it to invalidate six of the team’s federal trademarks.
  • 1998 – Dan Snyder, a local businessman, purchases the team from Cooke. He likewise refuses to meet with Native Americans about their concerns.
  • 1999 – The US Patent Office finally agrees with Harjo and the other six defendants, finding for the first time that the team’s trademarks violate the Lanham Act.

In the time since 1999, the case has been overturned and reheard several times.

So what does the case look like now? And what does it have to do with trademark law?

A Side-Note on the Lanham Act

You have to understand the Lanham Act to understand the Redskins’ argument.

The Lanham Act became law in 1946, codifying trademark standards nationwide. It is a massive collection of rules and regulations that prohibits trademark infringement, trademark dilution, and false advertising, among many other things.

For the purposes of this case and this discussion, the relevant section of the Lanham Act reads as follows:

“No trademark … shall be refused registration … unless it [consists 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.”

While that seems fairly cut and dried to some, the language is vague enough that the Washington Redskins have now forced the federal government’s hand.

In its counter-suit against the Native people that brought the trademark suit, the Redskin argue that the Lanham Act itself is “unconstitutionally vague” on the subject of disparaging trademarks, arguing that it infringes on First Amendment free-speech rights.

The Redskins’ Argument

After the team lost their big appeal, which meant the loss of all six of their name trademarks, the team turned its litigation toward the Native group that forced the trademark removals.

The appeals board found that the team’s name could offend a large number of Native Americans to violate a provision in trademark law known as the Lanham Act. This was the basis for the board’s removal of federal trademark protections for the “Redskins” name.

The team’s argument is two-fold.

They say that their trademarks were stripped away thanks to a sixty plus year-old unconstitutional provision.

But they also argue that their name trademarks are powerful marketing and communication tools that the team uses for marketing purposes. They also point to the team’s long tradition in their professional league as a defense of their continued use of the mascot and name.

Head spinning a little bit? Don’t worry – it gets even more complicated.

As if it’s not enough to attack the constitutionality of big chunks of the Lanham Act, the Redskins also have an argument against the use of the Act in this case altogether.

In their lawsuit, the team suggests that the government has failed to meet a requirement of the Lanham Act. According to the Redskins’ lawyers, trademarks can only be ruled as “disparaging” if they were considered disparaging at the time of the trademark’s creation.

They say not enough evidence was presented during the appellate decision to prove that the name “Redskins” was as disparaging in 1967 as it is now. The team’s first Redskins trademark, by the way, hit the books in 1967.

The team’s overall argument against the stripping of their trademarks goes something like this:

The federal government is penalizing us for attempting to communicate our image the public with legally-registered trademarks that they say are disparaging – but even if the trademarks are disparaging now, they weren’t when we first earned them.

The Justice Department’s Argument

What is the government’s position at this point?

When the Justice Department got wind that the Redskins were going to make a constitutionality case, they decided to intervene.

After all, the Justice Department has the right to intervene in any federal action involving the constitutionality of an act of the government.

The immediate effect of this decision on the part of the Federal government was to make the Redskins’ case seem impossible. Now that the United State of America is on the side of the Native petitioners, the Redskins council appears to have an uphill battle.

It’s interesting to me that, in announcing its intervention, the Justice Department made an emotional appear on behalf of the Native Americans in the suit. Here’s what Acting Assistant Attorney General Joyce R. Branda had to say:

“I believe strongly in the rights of all Americans to celebrate and maintain their unique cultural heritage. Going forward, we will strive to maintain the ability of the United States Patent and Trademark Office to make its own judgment on these matters, based on clear authorities established by law.”

Those are tough words from a strongly-held position, one that seems destined to force the Redskins to change their name.

Of course, that’s just my opinion.

The Future of the Case

A decision reached by a Federal appeals court on April 20th, 2015 appears to indicate that the Federal government will stick to its guns on the issue of trademarks that include “disparaging language.”

Two separate attempts to trademark the band name The Slants, on the part of its Asian-American members, have failed. The government’s justification for rejecting the trademark? They say simply that the name is disparaging to Asians.

If you think about it, this shows a lot of gravitas.

The Federal government here is making a strong case for the continued use of the disparagement clause in the Lanham Act even while the Redskins legal team is attempting to have the Act ruled unconstitutional.

It’s the closest thing to a scandal that you’re likely to come across in the world of trademark law.

The case hangs on whether or not the Federal government can effectively defend the provisions in the Lanham Act from the insinuation that either the trademarks were not offensive when filed or that the Redskins right to be “disparaging” is protected by the Bill of Rights.

For now, it looks very seriously like the Washington Redskins will have to change their mascot.

The loss of their trademarks would block the ability of the team or the league from protecting the team’s brand at all.

This could bankrupt the team and cost the NFL a lot of money. After all, the league splits all merchandising revenue among all its teams evenly, so the effect of losing one of the league’s most popular and best-known brands would be felt from San Francisco to Buffalo.

In other words, if the Redskins lose their trademark, every NFL team loses money.

Is the Name “Redskins” Disparaging to Native Americans?

I’m not going to tell you how you should feel about the name “Redskins.”

I think this issue is a bit too emotional for some people, and I don’t really want to talk politics.

Though my interest in this case is focused primarily on the trademark issues involved, it helps to understand the arguments both in favor of and against the idea of “Redskins” as a disparaging slur.

My natural curiosity about the case led me to do a ton of research on both sides of the argument.

I’ve found several examples of what I believe are well-crafted arguments from both sides of the issue.