In
Part I of this piece I told the story of the time my son kicked my dick so hard I pissed blood. I concluded with the realization that "Just like Dan Snyder, I piss burgundy and gold!" This realization coupled with some
comments last week about the use of the word "Redskins" got me thinking about some legal wrinkles in the analysis.
Here's some quick background that will make my upcoming rant more understandable. You can register a trademark with the federal government if you use that mark in commerce in connection with goods or services. In particular, you register the mark with the United States Patent and Trademark Office (USPTO or PTO). You submit an application and an examiner decides whether to register the mark. You have a back-and-forth dialog with the examiner but if he won't give you the mark you can appeal his refusal to the Trademark Trial and Appeal Board (TTAB). If you don't like the TTAB's decision you can appeal that to the US Court of Appeals for the Federal Circuit (CAFC). After that you're shit out of luck (SOL), unless the Supreme Court of the United States (SCOTUS) will hear the case but that's highly unlikely. If you don't like someone else's trademark you can challenge it in the TTAB, and the owner of the mark has the option to remove the matter to the US District Court for the District of Columbia (DDC). You an appeal the DDC's decision to the Court of Appeals for the District of Columbia Circuit (CADC), and again you're probably SOL if you don't like their conclusion.
In 1992 a group of seven Native Americans petitioned the TTAB to cancel the REDSKINS trademark because they found it disparaging. There were many proceedings before the TTAB, DDC, and the CADC. In the end six of the Native American petitioners' claims were dismissed based on a
laches defense -- the mark was registered in 1967 and they didn't sue until 1992. Simply put, they sat on their claim for too long. (I can't believe I'm writing about laches here
again.) The seventh petitioner was only a year old in 1967 so he couldn't have sued when the mark was first registered, but he turned 18 in 1984 so he waited 7 years and 9 months to file his petition. Through various intellectual convolutions, DDC decided that he wasn't reasonably diligent in bringing his claim and CADC affirmed.
Here's the CADC opinion. There may have been more opinions after this one but the gist is that these folks waited too long to complain that they were offended by the use of the name REDSKINS.
The obvious solution to this problem is to find a bunch of Native American kids with the same birth date and file a petition on their behalf on the day they turn 18. This is why people hate lawyers.
In fact I think someone has already started to put such a group of petitioners together. But what happens next? Well, the TTAB or DDC have to decide if the mark is "immoral, deceptive, or scandalous" under Section 2 of the Lanham Act. What does that mean? That means the petitioner must demonstrate that mark is shocking to sense of truth, decency, or propriety; disgraceful; offensive; disreputable; giving offense to conscience or moral feelings; or calling out for condemnation.
How the hell do you do that? Sometimes it's easy, like when you have a smutty mark. CAFC recently affirmed the TTAB's refusal of "COCK SUCKER" which was intended to be used on chocolate lollipops shaped like roosters. Apparently the target audience was students at the University of South Carolina and Jackson State University because they both have gamecock mascots. Seriously,
read the opinion.
"COCK SUCKER" is clearly vulgar and I don't know why CAFC needed 13 pages to reach that conclusion but I'm not a judge so what do I know. Similarly, the following smutty marks have been refused by CAFC and/or TTAB:
1-800-JACK-OFF
JACK-OFF
A photo of a man and a woman with the man's penis exposed, used to promote swinging
CUMFIESTA
CUMGIRLS
PUSSY
SEX ROD (opposed by the Red Sox in part because it was in the same font as their trademark)
YOU CUM LIKE A GIRL
DE PUTA MADRE
BULLSHIT
W.B. WIFE BEATER
TWATTY GIRL
GRANDMA SCHITTHED'S OUTHOUSE BROWN
GRANDPA SCHITTHED'S INKY STINKY PALE ALE
SCHITTHED'S
DICK HEAD'S
But they allowed "BIG PECKER BRAND" because "use of the term 'pecker' meaning penis is rapidly becoming archaic" and just isn't offensive anymore. So start throwing that term around the office and if anyone reports you to HR tell them to take it up with the TTAB.
In the context of disparaging marks, the TTAB applies the following test:
(1) what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and
(2) if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.
How does this play out in practice? Oddly. For example, in
In re Squaw Valley Dev. Co., the TTAB concluded that the marks "SQUAW" and "SQUAW ONE" were offensive when used to sell clothing or retail store services in the field of sporting goods or equipment. They reached this conclusion after reviewing a plethora of dictionaries, articles, state laws, and other sources showing that "SQUAW" is an offensive term for a Native American woman. However, they decided that "SQUAW" was not offensive when used to sell skis, ski poles, ski bindings, and other ski equipment because Squaw Valley is a ski resort and it's often referred to simply as "Squaw." Again, people hate lawyers for a reason.
Similarly, the mark "HEEB" was refused (by a panel of judges named Seeherman, Holtzman, and Kuhlke) as disparaging to Jews. But by contrast, "MAFIA BRAND" and "JUNIOR M.A.F.I.A." (Biggie!) were allowed because "MAFIA" isn't disparaging to Italians ... according to two panels of judges named Chapman, Hairston, and Bottorff; and Simms, Walters, and McLeod, respectively.
Sometimes reading cases is fun: "BLACK TAIL" was used to sell noodie magazines and it was allowed because:
As the Court said in Mavety, and as the present record shows, the word “tail” can have a variety of meanings as applied to an adult entertainment magazine. In particular, the dictionary definitions show that “tail” can mean “buttocks,” and there is no indication from the dictionary definitions that such a meaning would be considered vulgar.
Having reviewed the issue of BLACK TAIL magazine which is of record herein, we find it difficult to believe that anyone, seeing the mark used for such a publication, would consider the phrase to refer simply to buttocks. The photographs in the publication are photographs of nude and scantily-clad African-American women, and while many of the photographs feature the rear ends of these women, a large number feature their breasts and genitalia, often showing the women using their fingers to further expose themselves. However, our principal reviewing Court stated quite clearly in Mavety that, in view of the existence of an alternate, non-vulgar definition of “tail,” the Board, without more, erred in concluding that in the context of an adult entertainment magazine, a substantial composite of the general public would necessarily attach to the mark BLACK TAIL the vulgar meaning of “tail” as a female sexual partner, rather than the admittedly non-vulgar meaning of “tail” as rear end. 31 USPQ2d 16 1928. Given that opposers have not provided any further evidence as to the meaning of “tail” than was present before the Court during the appeal, we cannot conclude that it is the vulgar meaning that the relevant public would attach to the mark, nor can the Board substitute its own judgment for that of the perspective of the relevant public.
Can you imagine reviewing back issues of Black Tail magazine in your office with a valid work-related reason?!? I need to get a job on the TTAB! Out of respect for the women of G:TB, this is the only Black Tail photo I will post here.
So what does all this mean for "REDSKINS"? My hunch is that it will be canceled. In order for a mark to be offensive "a substantial composite of the referenced group" must feel disparaged. Here are some data from the TTAB proceeding involving the REDSKINS mark:
As we already saw, "SQUAW" was not allowed in some circumstances (i.e., when it wasn't clearly tied to Squaw Valley) because it was found to be offensive, but less than half of Native Americans (47.2%) surveyed felt offended by it. So you don't need to demonstrate a consensus to establish that a mark is disparaging. In fact, the judges who denied the HEEB mark noted that "While case law does not provide a fixed number or percentage, it is well established that a 'substantial composite' is not necessarily a majority." Given that 36.6% of Native Americans surveyed (i.e., more than 1 in 3) and 46.2% of the general population are offended by "REDSKINS," I can easily see the mark being canceled (once the stupid laches shenanigans are avoided). The "HEEB" opinion suggests that if a sub-population within the group in question is offended, then the "substantial composite" requirement is met, and a smart lawyer should be able to parcel out a particular sub-population of Native Americans to win cancelation.
To that point,
Rick Reilly clearly isn't a trademark lawyer. There was an LA-based rap group called N.W.A. that was popular in the late 80's/early 90's. You may have heard of them. According to their
Wikipedia page, N.W.A. stands for "N***az Wit Attitudes." N.W.A. registered the "N.W.A." mark with the USPTO. They did not, however, register "N***AZ WIT ATTITUDES". Clearly they aren't offended by the word "n***az," and neither are countless other emcees who throw the word around, so in Rick Reilly's world what's the problem? In fact, many people have tried to register marks containing this word but none have been allowed. And obviously the NAACP would win if they petitioned the TTAB to cancel a mark containing this word. So just because some Native Americans don't mind calling themselves "REDSKINS" doesn't mean that the term isn't offensive to other Native Americans. Or perhaps to put too fine a point on it, what does Rick Reilly think would happen if they changed the team name to the Washington Niggaz? Chris Rock pondered this previously but I can't find the video.
Of course, even if the federal registration of the REDSKINS mark gets canceled, Snyder et al. can continue to use it and can probably even enforce infringement of the mark in state court. But can you imagine how shitty Snyder would look if a panel of federal appellate judges decide that "REDSKINS" is too racist a word to receive federal protection but he continues to use it nonetheless? No one can be that tone deaf.
I joked yesterday that they should become the Washington Hematuria but I did a google image search and found nothing that would look good on a helmet. So here is a handful of suggestions.
WASHINGTON WASPS - tons of them in Northern Virginia and they'd love to rock "WASP" hats with plaid shorts and Topsiders. They can keep the colors too.
WASHINGTON VICTORS - hail to the victors, hail victory. The song writes itself. And it needs to be rewritten.
WASHINGTON RATTLESNAKES - they can keep the "R" trademark and the colors, and this particular snake is found in
Maryland:
WASHINGTON GIBBSES - how fucking dope would this look on a helmet?
WASHINGTON RHINOS - tough as nails, they keep the "R", and no one else uses it. Sure, there are no rhinos in DC but how many Native Americans do you see in the District?
My work here is done. Next week I'll solve another major American crisis that arises in G:TB's comments.
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