On the heels of the recent Trademark Trial and Appeal Board (TTAB) decision to cancel six federally registered trademarks of the Washington Redskins, a Native American group has stated its intention to file a federal lawsuit against the Cleveland Indians. The advocacy group, People Not Mascots, led by Robert Roche, plans to initiate litigation challenging the baseball team’s name and mascot, Chief Wahoo. The group will request that the name and mascot be changed based upon the belief that it is disparaging toward Native American populations. The lawsuit is expected to be filed by late July and will seek $9 billion in damages.
In light of the Washington Redskins’ decision and the potential litigation that may surface not only from that case, but from others brought by advocacy groups such as People Not Mascots, it is important to fully understand what it means for a trademark to qualify as disparaging in nature. Section 2(a) of the Trademark Act states that the TTAB may refuse or cancel an application upon a finding that the trademark “[c]onsists of or comprises…which may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” To make this determination, the TTAB employs a two factor inquiry:
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[1].
Furthermore, a trademark may be disparaging when it “dishonors by comparison with what is inferior, slights, deprecates, degrades, or affects or injures by unjust comparison.[2]” A finding of disparagement is a conclusion of law based upon the underlying factual examination of evidence presented by both the trademark owner and the challenger.
Following this test, the TTAB analysis regarding whether the Cleveland Indians’ name and logo should be cancelled as disparaging would ask: 1) what is the meaning of “Cleveland Indians” as it appears in the marks and in connection with the goods and/or services identified in the registrations; and 2) is this meaning one that may disparage a significant amount of Native Americans? As one would imagine, the Cleveland Indians have a number of goods and services related to its various trademarks, ranging from sports programs to jewelry. Therefore, it will be up to the TTAB to decide if the meaning of team’s name and logo, in association with its good and services, is one that may be found offensive to the Native American population.
The impetus for advocacy groups to stand up and speak against what many feel has been overt denigration in the aftermath of the Washington Redskins’ decision leads one to believe that more lawsuits are coming. Some critics believe that the recent TTAB decision will not have a domino effect due to the notion that the Redskins’ name is considered a unique racial slur and carries a checkered past. Yet, these people are not in the minds of Native Americans. This upcoming college football season, the Florida State Seminoles will sport a new logo while defending their BCS National Championship; who’s to say that a claim challenging the latest design will not arise at some point in the future? The Redskins’ decision may not be one that carries heavy precedential value due to its history and the actions taken by the media to encourage change. However, if the lawsuit filed by Robert Roche and People Not Mascots against the Cleveland Indians is able to gain traction, it may mark the beginning of numerous lawsuits challenging team names and logos that may be viewed as unfavorably representing particular groups across the nation.
[1] See In re Geller, — F.3d —, 110 U.S.P.Q.2d 1867 (May 13, 2014).
[2] See Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96,124 (D.D.C. 2003) (internal quotations omitted).