While the media has focused for years on claims that sports logos depicting Native Americans are disparaging, the issue is now front and center in the courts as well. This past February, the organization People Not Mascots filed a petition to cancel the Cleveland Indians’ trademark for its infamous Chief Wahoo logo (Reg. No. 2,569,766). Pet. for Cancellation, People Not Mascots, Inc. v. Cleveland Indians Baseball Co., Ltd. P’ship, No. 92063171 (T.T.A.B. Feb. 16, 2016), p. 11. The organization claims that the logo consists of matter that disparages Native American persons and brings them into contempt, ridicule, and disrepute. Id.
The Chief Wahoo case is currently pending in front of the U.S. Patent and Trademark Trial and Appeal Board (“TTAB”). However, the TTAB recently delayed the case until resolution of other cases that also involve Section 2(a) of the Trademark Act of 1946 (aka the Lanham Act), 15 U.S.C. §1052(a). Susp. Pend. Disp. of Civil Action (5/23/16), pp. 2-3. Two of those other cases are currently on petition to be heard by the U.S. Supreme Court: In re Tam and Pro-Football, which deals with cancellation of the Washington Redskins’ trademarks.
Petitions for Supreme Court Review of In re Tam and Pro-Football
In re Tam involves the attempted trademark registration of the name “THE SLANTS” by a dance-rock band of the same name. Pet. for Certiorari, Lee v. Tam, No. 15-1293 (filed Apr. 20, 2016), pp. 1, 4-7. The Patent and Trademark Office, the TTAB, and the court of appeals all agreed that “THE SLANTS” was disparaging to persons of Asian ancestry and, therefore, refused registration. Id. However, the en banc U.S. Court of Appeals for the Federal Circuit vacated the decision and remanded for further proceedings. Id. It held that the Lanham Act’s disparagement clause is facially unconstitutional under the Free Speech Clause of the First Amendment. Id. The government is now petitioning the Supreme Court to review the case and overturn the en banc court’s decision. Id.
The Pro Football case involves a federal district court’s decision to cancel six of the Washington Redskins’ marks. Pet. for Certiorari, Pro-Football, Inc. v. Blackhorse, No. 15-1874 (filed Apr. 25, 2016), pp. (i), 1-5. Five days after the In re Tam petition was filed, the Washington Redskins took the unusual move to petition the Supreme Court to rule on its appeal before allowing the U.S. Court of Appeals for the Fourth Circuit to rule on the same appeal. Id. In addition to presenting the same question as In re Tam regarding whether the Lanham Act’s disparagement clause violates the First Amendment, the Pro-Football case also presents the questions of (1) whether the disparagement clause is impermissibly vague in violation of the First and Fifth Amendments, and (2) whether the government’s delay between registering the Redskins’ marks and cancelling them violates due process. Id. A key distinction between the two cases is that In re Tam involves a trademark application, while Pro-Football involves cancelling an already registered trademark. Id. The “Redskins” marks were registered in 1967, 1974, 1978, and 1990. Id.
Waiting Game for Chief Wahoo
In its petition to cancel the registration of the Chief Wahoo logo, People Not Mascots admitted that its petition “borrows from, and is similar to” the petition to cancel the Washington Redskins’ marks. Petition, p. 5. It notes that the TTAB “has already cancelled the Redskins registrations,” and states that the Chief Wahoo logo is “the non-verbal communication of the racial slur, ‘redskins.'” Id. Thus, People Not Mascots tied the success of its petition to the success of the petition against the Redskins’ marks.
The Cleveland Indians moved to dismiss the cancellation proceeding for failure to state a cause of action, or, alternatively, to suspend the proceeding pending final resolution of the In re Tam case and another case that is currently pending in the Federal Circuit: In re Brunetti, No. 2015-1109. Registrants’ Mot. to Dismiss or Suspend the Proceeding, People Not Mascots, Inc. v. Cleveland Indians Baseball Co., Ltd. P’ship, No. 92063171 (T.T.A.B. March 31, 2016), pp. 1-4. While In re Tam and Pro Football involve the “disparagement provision” of section 2(a) of the Lanham Act, People Not Mascots also seeks to cancel the Chief Wahoo trademark under the “immoral or scandalous prong” of section 2(a). Id. According to the Cleveland Indians, the In re Brunetti case deals with that other prong in the context of the TTAB’s refusal to register the mark “fuct.” Id.
On May 23, 2016, the TTAB granted the Cleveland Indians’ motion to suspend. Susp. Pend Disp. of Civil Action, pp. 2-3. It found that “[t]he final decision in either or both of In re Tam and In re Brunetti, or of any appeal thereof may have a bearing on the present proceeding in that the decisions may determine whether the noted claims state constitutionally permissible causes of action. In the interests of judicial economy and avoiding the possibility of reaching a conclusion inconsistent with any final resolution of [those two cases], suspension is appropriate.” Id. In an apparent reference to the Pro Football petition, the TTAB added that the suspension “may be lifted following any decision by the Supreme Court that finally resolves the issues in those cases that have a bearing in this proceeding.” Id.
Thus, the parties wait for further clarity from the appeals process in other cases. The fate of the Chief Wahoo trademark will likely hinge on the ultimate outcome of the Pro-Football case. However, if the Supreme Court grants the In re Tam petition and holds that the Lanham Act’s disparagement clause is constitutional, then one potentially important difference from Pro Football is that the Chief Wahoo logo was registered in 2002, decades after the Redskins’ marks. Whether a mark is found to be disparaging depends on whether it was disparaging at the time the registration was issued. Harjo v. Pro Football, Inc., 50 U.S.P.Q.2d 1705, 1773-75 (T.T.A.B. April 2, 1999) (disparagement is analyzed at the time of registration); Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 125 (D.D.C. 2003) (same). Societal views of what is disparaging certainly change over time. For now, Chief Wahoo remains on the bench, waiting to see if he will be forever retired.