Offensive Penalty: The Cancellation of the Redskins Trademark

By: Sarah Remes* | Summer Guest Writer

This summer, the Washington Redskins lost.  Although defeat is nothing new to the infamous franchise, this time it came off the field when a federal judge upheld the cancellation of the team’s federal trademark registrations, finding that the term “redskin” was disparaging, and therefore that the mark had been registered in violation of the Lanham Act.

The namesake of the Redskins, William “Lone Star” Dietz

The namesake of the Redskins, William “Lone Star” Dietz

The Redskins began defending their trademark registrations in the early 1990s but until recently had been successful in fending off legal opposition.  The first major challenge was brought in 1992 when a group of Native Americans filed a petition to cancel multiple Redskins trademarks, claiming that their protection violated the Lanham Act, a federal law that prohibits protection of marks that “consist of or comprises immoral, deceptive, or scandalous; 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.” That case was successfully appealed by the team on two grounds: first, that the theory of laches barred the petition, as one of the plaintiffs was only one year old at the time the Redskins trademarks were registered in 1967; and second that the plaintiffs had not provided enough evidence as to the “disparaging” nature of the trademark, which must have occurred at the time they were registered.  While controversy surrounding the name continued to grow – even President Obama couldn’t avoid commenting – legally the team appeared in the clear.

This time, the plaintiffs, led by Susan Blackhorse, were determined not to make the same mistakes.  In June of 2014, Blackhorse challenged six Redskins trademarks, again under the Lanham Act, which led to their cancellation by the United States Patent and Trademark Office.  Not surprisingly, the team contested the decision, arguing instead that the name represents a strong and proud history that serves to celebrate and pay tribute to Native Americans, not degrade them.  “A Redskin is a football player.  A Redskin is our fans,” owner Dan Snyder explained.  “The Washington Redskins fan base represents honor, represents respect, represents pride.  Hopefully winning.” (This last part is definitely still up for debate).  On appeal, the court sided with Blackhorse, holding that the trademarks were disparaging at the time of their registration, and should not have received protection.

It is important to note that cancellation of the trademarks does not deny the team the right to continue using the name and call themselves the Redskins.  Instead, and maybe even more critically in the booming business that is professional sports today, it effectively causes the team, and its voracious owner, to lose commercial control over the brand.  Of the National Football League’s almost $10 billion annual revenue, an estimated $1 billion comes from merchandise and licensing; once the Redskins have exhausted all possible appeals, anyone will be able to create and sell merchandise using the cancelled marks without having to pay the team or league for royalties, and free from any possible claims of trademark infringement.  Considering the revenue sharing mechanism of the NFL, it is expected that owners will encourage the Redskins to come up with another name to retain control over such sales, particularly given their status as the league’s third-most valuable team, worth $2.4 billion.

However, this sort of change would mean more than just picking a new moniker – it would be a complete rebranding of the entire franchise.  While it is easy to imagine the profits that new merchandise would generate, the impact of rebranding touches far more than the jerseys and hats sold at FedEx Field.  Sources familiar with projects of this magnitude project that this type of overhaul could cost upwards of $15 million.

Known as one of the more outspoken and active owners in the league, Snyder has remained unequivocally committed to the name.  “We’ll never change the name,” he said.  “It’s that simple.  NEVER – you can use caps.” Although legal channels are still available for the team to challenge this most recent ruling, it is hard to imagine that Snyder isn’t wishing he might have left himself a little more wiggle room.

This wouldn’t be the first time that a professional team explores a name change in the nation’s capital.  Following the 1996-97 season, owner Abe Pollin changed the city’s basketball team from the Bullets to the Wizards in response to the skyrocketing homicide rate in Washington.

Sarah Remes is a second year law student at Wake Forest University School of Law.   She holds a Bachelor of Arts in Economics and Hispanic Studies from Trinity College in Hartford, CT.  A DC native herself, Sarah remains a devoted and frequently frustrated fan of the Washington football team.