Cancellation of Redskins Trademark  - Disparagement Claim
Disparagement ClaimWhile this is the second petition asserting a claim of disparagement against the same six registrations and the parties stipulated to the same record, this proceeding presents significant differences from the first. The Harjo case asserted other claims not present here, e.g., that the Native American imagery as well as the word REDSKINS was scandalous to the general public and that the Board should, in making its decision, apply the Indian Trust Doctrine.

The determination of the disparagement claim at issue herein requires the following two-step analysis:What is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations?Is the meaning of the marks one that may disparage Native Americans?As confirmed by the parties at the oral hearing, it is already established that (1) this disparagement claim only pertains to the term REDSKINS and (2) as to “the meaning of the matter in question” “as used in connection with respondent’s services, REDSKINS clearly both refers to respondent’s professional football team and carries the allusion to Native Americans inherent in the original definition of that word.”35 Harjo v. Pro-Football, Inc., 50 USPQ2d at 1742, rev’d on other grounds, Pro-Football, Inc. v. Harjo, 68 USPQ2d at 1249. Moreover, as to the second point, the evidence overwhelmingly supports a determination that the term REDSKINS as it appears in the marks retains the meaning Native American. Two of the registrations include Native American imagery. Registration No. 0986668 (top) and Registration No. 0987127 (bottom) are shown below.The image of a Native American has appeared prominently as a logo on the helmets of respondent’s Washington Redskins’ team uniforms, as demonstrated by the images below of its former players John Riggins in Super Bowl XVII in 1983 (left) and Doug Williams in Super Bowl XXII in 1988 (right).The Washington Redskins marching band had worn Native American headdresses as part of its uniforms between the 1960s and the 1990s, as shown in the image below from the 1980s.The Redskinettes also had appeared wearing costumes suggestive of Native Americans, as shown in the 1962 photograph of them reproduced below, which contained the title “Dancing Indians” and the caption “Here are the Redskinettes all decked out in their Indian garb and carrying Burgundy and Gold pom-poms.”Between 1967 and 1979, the annual Washington Redskin press guides, shown below, displayed American Indian imagery on the cover page.Respondent has made continuous efforts to associate its football services with Native American imagery.

As confirmed by the District Court:Mean of the Matter in Question ... "This is not a case where, through usage, the word 'redskin(s)' has lost its meaning, in the field of professional football, as a reference to Native Americans in favor of an entirely independent meaning as the name of a professional football team. Rather, when considered in relation to the other matter comprising at least two of the subject marks and as used in connection with respondent's services. 'Redskins' clearly both refers to respondent's professional football team and carries the allusion to Native Americans inherent in the original definition of that word." Id. Based on the record before the TTAB, the Court finds that this conclusion is supported by substantial evidence. Pro-Football, Inc. vs. Hargo, 68 USPQ2d at 1248-1249 quoting Harjo v. Pro-Football, Inc., 50 USPQ2d at 1742.The term REDSKINS in the registered marks when used in connection with professional football retains the meaning Native Americans. Thus, the first prong of the test, “what is the meaning of the matter” is established.

The only issue left for decision is the second question in the disparagement test (was the meaning of the marks, at the times of the registrations, one that may have disparaged Native Americans?) as it pertains to the term REDSKINS.

Having narrowed the issue to be determined, it is now necessary to understand what type of disparagement case the facts of this limited case present. We must make our determination in the context of a respondent’s goods or services. Such context can:turn an innocuous term into a disparaging one, see In re Lebanese Arak Corp., 94 USPQ2d 1215, 1223 (TTAB 2010) (likely meaning of KHORAN is the Islamic holy text and use for wine disparages religion and beliefs of Muslim Americans); see also Doughboy Industries, Inc. v. The Reese Chemical Co., 88 USPQ 227 (Exm’r in Chief 1951) (Doughboy refers to World War I American soldier as reinforced by picture of soldier on packaging and use on “a prophylactic preparation for the prevention of venereal diseases” disparages the soldiers); orstrip the disparaging meaning from an otherwise disparaging term, see Squaw Valley, 80 USPQ2d 1264, 1267 (SQUAW when used with ski-related goods means only the geographic location Squaw Valley ski resort and does not retain the meaning Native American woman under the first part of the test, and, as such is not disparaging; but as to non-ski-related goods and services the meaning remains Native American woman, i.e., the goods and services did not change the meaning, and the evidence was sufficient to support the second prong of the test that the term is considered disparaging as the term is used in connection with the identified goods or services); orhave no effect on a term’s disparaging meaning, see Heeb Media, 89 USPQ2d 1071, 1077 (applicant’s good intent and inoffensive goods and services do not obviate finding that HEEB is disparaging in context of the goods and services; and disagreement within the referenced group does not erase the perception of those who find it disparaging).Here, petitioners assert that REDSKINS is a racial slur, thus the facts do not present the Doughboy case because it is not allegedly an innocent term where the nature of the goods or services renders the mark disparaging. The facts also do not fall within the part of the Squaw Valley case where the Board reversed the refusal as to the ski-related gear because it did not pass the first prong of the test inasmuch as the word lost its allusion to Native American women when used in the ski context due to the geographic location called “Squaw Valley” and the well-known ski resort located there. Here, it is conceded by the parties and established by the record that the term REDSKINS retains its meaning “Native American” even when used with respondent’s services.

Turning back, then, to the issue in this case, namely, whether the term REDSKINS was disparaging at the time of registration, the services do not have an effect on the meaning of the term, i.e., the first prong. The question is only as to the second prong, whether the term is disparaging. The facts of this case demonstrate the type of disparagement presented in Heeb and the non-ski-related goods and services portion of Squaw Valley. In other words, respondent’s alleged honorable intent and manner of use of the term do not contribute to the determination of whether a substantial composite of the referenced group found REDSKINS to be a disparaging term in the context of respondent’s services during the time period 1967-1990, because the services have not removed the Native American meaning from the term and intent does not affect the second prong. If it is found to be disparaging during the relevant time period, then the Trademark Act mandates removal from the register.

In presenting their case, petitioners laid out two categories of evidence to prove that the term REDSKINS, even when considered solely as used with football and cheerleading services, was disparaging during the relevant time periods: (1) a general analysis of the word; and (2) the specific views of the referenced group. In some instances these two types of evidence intersect.

As noted above, the prior Harjo case encompassed more issues as reflected by the pleadings and illustrated by the voluminous and wide-ranging record. We only focus on the evidence that most directly reflects the sentiments of Native Americans. In particular, concerning the general analysis of the word, we focus on the testimony and reports provided by the parties’ respective experts, dictionary definitions and reference books. For the specific views of Native Americans, we focus on the National Congress of American Indians’ (“NCAI”) 1993 Resolution 93-11, the deposition of NCAI Executive Director, Ms. JoAnn Chase, the deposition of Harold Martin Gross, and various newspaper articles, reports, official records and letters.

Expert Reports
Dr. Geoffrey Nunberg served as petitioners’ expert witness in linguistics, specializing in lexical semantics (“the study of the use of words and lexicography”). Dr. Ronald R. Butters served as respondent’s linguistic expert witness, specifically tasked by respondent to research “the evolving history of the meaning of the term redskin in American English.” David K. Barnhart was respondent’s expert witness in lexicography, whom respondent asked to evaluate “the term redskins in the current American usage, particularly in the context of sports.” The record establishes that each of these witnesses is qualified to testify regarding the term “redskin” within the context of their specialties.

We focus on those parts of the expert reports and testimony concerning the derivation of the word redskin(s), dictionary usage labels and usage of the term “redskin(s)” over the years in various media.1. Derivation of the Word “Redskin(s)” as Reference to Native AmericansMr. Barnhart explains that “[t]he original (or core) meaning of the word redskin identifies the race of people found by colonizing Europeans in the 16th and 17th Centuries.” In his report Mr. Barnhart confirms that “redskin(s)” as an ethnic term refers to skin color:It is reasonable to expect people upon encountering something new to use a term which bears on its use, size, appearance or other characteristic feature. The word red appears in a large number of terms in English. It should be noted that there is another meaning for redskin descriptive of a variety of potato. In the case of the potato it is because of its color. In the case of the people living in North America upon the arrival of Europeans it was likewise based upon appearance. . . . In recent years the sensitivities of these people have caused some speakers of English to adjust their usage of some of these terms accordingly. . . . The naturalness of the construction of the word redskin is underscored by the presence in the language of other terms with reference to color in describing the appearance of a person’s skin. Blue skin is a 19th Century term used to describe blacks. See for instance Grose 1796 edition where he defines blue skin as “a person begotten of a black woman by a white man. One of the blue squadron; any one having a cross of the black breed, or, as it is termed, a lick of the tar brush.” . . . Another example of this genre is darkskin for a black. Still other examples include yellow-skin for an Asian, blackskinned and brown-skinned for blacks.In extrapolating on the concept of the use of skin color in language Mr. Barnhart testifies as follows:Q. Do you know the word darky?
A. Yes.
Q Is that word natural in its construction insofar as it applies to
complexion?
A. Yes.
Q. Is it offensive to African-Americans?
A. It can be.
Q. Is it derogatory?
A. Depending on the context, yes. But I haven’t evaluated the
context of darky particularly, so I would want to see some more
examples and evaluate what evidence I could accumulate, yes.The record includes two works by Irving Lewis Allen who Dr. Butters testifies is a sociologist “who has given some thought to language” and is “certainly a respectable scholar.” We particularly point to the following excerpt from his book Unkind Words: Ethnic Labeling from Redskin to WASP (Bergin & Garvey 1990) p. 18:Nearly half of all interracial slurs ...refer to real or imagined physical differences. ... Most references to physical differences are to skin color, which affirms what we have always known about the significance of color in human relations. Asian groups were called yellow this and that and Native Americans were called redskins, red men, and red devils.2. Dictionary Usage Labels for "Redskin" EntriesThe record includes several dictionary definitions (submitted separately or within the contexts of the expert reports) published during the relevant time frame of 1967 through 1990. A representative sample is set forth below:RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE 1204 (1967):
redskin n. Often Offensive. a North American Indian.
RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE 1204 (1973):
redskin n. Often Offensive. a North American Indian.
RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE 1618 (2d ed. 1987):
redskin n. Slang (often disparaging and offensive). a North American Indian.HBJ SCHOOL DICTIONARY (1977):
redskin n. A North American Indian.WEBSTER’S NEW TWENTIETH CENTURY DICTIONARY OF THE ENGLISH LANGUAGE UNABRIDGED 1513 (2d ed. 1977):
red’skin, n. a North American Indian; so called from the reddish or coppery color of the skin.WORLD BOOK DICTIONARY, VOL. 2 1752 (1979):
redskin (red’skin’), n., adj. North American Indian: We have had more difficulty with white desperadoes than with
Redskins (Theodore Roosevelt).OXFORD AMERICAN DICTIONARY 564 (1980):
redskin n. (contemptuous) a North American Indian.OXFORD ENGLISH DICTIONARY 429 (2d ed. 1989):
redskin. Also red-skin [See RED a. 5c.] 1. A North American Indian. (Not the preferred term.).We further note the earliest restrictive usage label in dictionary definitions in Mr. Barnhart’s report dates back to 1966 from the Random House Unabridged First Edition indicating REDSKIN is “Often Offensive.” From 1986 on, all of the entries presented by Mr. Barnhart include restrictive usage labels ranging from “not the preferred term” to “often disparaging and offensive.”
All of the experts referenced, either by testimony or in their expert reports, the seminal work in lexicography, Dictionaries: The Art and Craft of Lexicography, written by Sydney I. Landau and first published in 1984. Mr. Barnhart, the lexicographer, explained that usage labels are a “[r]eflection of the opinion of the editor in chief … But some people that are in lexicography have been known to be less stalwart and have caved into suggestions from non-editorial sources.” He explains that “unlabeled terms are standard and labeled terms are labeled for some particular character.” Mr. Barnhart explained that the “basic and longstanding practice in lexicography which deals with noteworthy ranges of usage of any given entry term is to label those instances of terms when the usage deviates from ‘Standard English.’” According to Mr. Barnhart, a term is generally “assumed to be ‘Standard’ if it is unlabeled.” However, there are times when a word “is worthy of special attention, a label (usually in italic type) is included in the entry.”

Mr. Barnhart explains that there is no standardized method in the field of lexicography regarding restrictive usage labeling.There are no agreed upon criteria for finding some usages vulgarly offensive or contemptuous or abusive. There are few studies that shed any light on the degree of offensiveness of specified terms under specified conditions.Each expert points to the influence of outside forces, or “pressure groups” on the adoption of usage labels by dictionary editors. For example, Dr. Butters testifies that sociologists, historians, and anthropologists applied “sociopolitical pressure” regarding the use of the term “redskin” on dictionary editors and “that any dictionary that labels redskin as a derogatory term is doing so, at least indirectly, as a result of, at least in large part, sociopolitical pressure.” This phenomenon is also recognized in the reference works relied on by the experts.

As part of his research, Mr. Barnhart reviewed dictionary entries for the term “redskin” between 1859 and 1992. He found no restrictive usage labels for the term “redskin” in any dictionaries prior to 1965. Beginning in 1966 Mr. Barnhart’s reviewed dictionary entries start to include usage labels indicating the term is offensive. See Random House Unabridged (1st ed. 1966). From that time on, more publishers include such labels at an increasing rate. By 1983, all of Mr. Barnhart’s examples include a usage label indicating it is offensive. Mr. Barnhart’s conclusion only references labels that use the word disparaging:Since 1966, the labeling of the term has been erratic at worst and inconsistent at best. Of the twenty-eight dictionaries consulted which appeared between 1966 and 1992, ten editors reported the term as “standard English”. Only two dictionaries have identified the term redskin as “disparaging”.However, we consider the usage labels that employ the term “offensive” also to support the legal conclusion under Section 2(a) that a term is “disparaging.” Therefore, Mr. Barnhart’s conclusion is based on too narrow a construction because he views the label “disparaging” as requiring intent. As noted above, for the purposes of our legal review intent does not figure into the equation. More significantly, we disagree that the labeling is erratic and inconsistent. Rather it shows a clear trend beginning in 1966 to label this term as offensive and by 1986 the dictionaries are unanimous.

Mr. Barnhart also found that among dictionary editors’ labels “there has been a sensitivity to how people react to that term [redskin] now.” In his expert report, Mr. Barnhart made the following conclusion based on his evaluation of the term “redskin” as it appears in various dictionary entries during the relevant time frame:[T]he use of the term redskin, in its core meaning and as recorded in dictionaries, is usually recognized among lexicographers as ‘Standard English’ which means that it is acceptable in both formal and informal speech or writing of educated people.This conclusion stands in contrast to the trend in usage labels during the relevant time period discussed above and the severe drop-off in usage discussed below. It is also contradicted by his statement in the same report that:The record of dictionary editors’ opinions as reflected in the labeling of usage for the term redskin suggests that during the latter third of this century there has developed some change in the perceived usage of the term.We further note Mr. Barnhart is addressing usage by the general population and not from the viewpoint of Native Americans.

In his expert report, Dr. Butters opined that “sporadic labeling of redskin as ‘offensive’ is of dubious value in assessing the tone and full meaning of redskin(s) in past and present American culture.” Dr. Butter’s ultimate conclusion is of limited probative value in that it pertains to general “American culture” rather than to the Native American viewpoint. In 1996, Dr. Butters testified as to the following:In the last 10 or 15 years, one begins to see in dictionaries the—in some dictionaries the labeling of the term redskin as sometimes offensive. One also begins to see in very recent years references to the use of the term redskin as a possibly offensive term. So that there is this, what I would say—my conclusion is a very recent incipient change.This statement recognizes the trend in usage labels during a portion of the relevant time period.3. Use of the term Redskins in Various MediaThe record shows wide usage of the term in various media prior to the late sixties and very sporadic usage thereafter. A few examples are set forth below:Merrit Meets the Enemy. Victory over our Frontier Foes. Thirty- Seven Redskins Sent to the Happy Hunting Grounds. The Indian Problem Reaching a Conclusion. Rocky Mountain News (October 8, 1879);And excited by firewater they dug up their rusty hatchets and prepared for blood and thunder. ‘Ugh,’ said every greasy redskin …
Rocky Mountain News (November 19, 1890);“Fort Wicked” Too Tough for Redskins . . . Headline from Rocky Mountain News (October 21, 1931);“Good luck, get a redskin for me.” Excerpt from the 1940 movie Northwest Passage;“There is reason in her words!” at length broke from his compressed and trembling lips; “ay, and they bear the spirit of Christianity; what might be right and proper in a redskin, may be sinful in a man who has not even a cross in blood to plead for his ignorance.”Indian Fights on the Texas Frontier: A True Account of the Last Exciting Encounters with Redskins in Hamilton, Comanche, Brown, Erath and Adjoining Counties (Fort Worth: Pioneer Pub. Co. 1927); Fighting Rebels and Redskins: Experiences in Army Life of Colonel George B. Sanford, 1861-1892 (Univ. of Oklahoma Press 1969); Bluecoats and Redskins: The United States Army and the Indian 1866-1891 (London: Cassall, 1975); Flashman and the Redskins (New York: Knopf/Random House 1982).Dr. Nunberg conducted several searches of an electronic database featuring articles from major newspapers and magazines published between approximately 1975 through 1989 to glean information about use of the word “redskins” in the context of Native Americans.89 According to Dr. Nunberg, “newspapers and television use have a particular influence on the way words are used and [help] shape the general impressions of the meanings of those [words].”

Dr. Nunberg reported that the database search results showed 136,473 instances of “redskin,” “redskins,” and other words beginning with “redskin,” such as “redskinnettes,” with the “vast majority” involving references to the Washington Redskins. Dr. Nunberg then conducted a focused search, filtering out terms such as “team,” “sport,” “Redskin Park,” “football,” “game,” “fan,” and “ticket,” to yield results of those instances when the word “redskin” was used to refer to a Native American person. This search resulted in approximately 300 references, although some of these still referred to the Washington Redskins, potatoes and peaches.

Dr. Nunberg reviewed the focused search results by hand and found “71 distinct stories in which the word was used to refer to Indians.” According to Dr. Nunberg, none of these 71 occurrences demonstrated use of “redskin” as a standard term to refer to a Native American, indicating that “the word is not a ‘neutral synonym’ for Indian” Of those occurrences, many examples use the term in the context of racial slurs or discrimination, for example:If Mr. Liles went back in history to when the 13 colonies were being organized, he would have seen that “redskin” was not used to convey respect, adulation or honor.

A man who resigned from the Pulaski County sheriff’s office because of alleged harassment as an American Indian has won $24,727 in a race discrimination lawsuit. . . . He said he was called “chief,” “Indian Joe” and “redskin.”98More significant than the relatively small number of uses as a reference to Native Americans, and many of those in the context of racial slurs, is the relative absence of use of the term to describe a person. Dr. Nunberg found it significant that this search yielded so few results showing the term “redskin” as a reference to a Native American:There were in this database over 74,000 instances of the phrase ‘American Indian’ or ‘American Indians.’ And over 73,000 instances to the phrase ‘Native Americans,’ a disproportion of about 2,000 to 1 which suggests that the use of ‘redskin’ to refer to Indian is extremely rare in this database which suggests some reason for avoiding the term since it is, in fact, a commonly used term, for example, in the cinema and historical sources.Respondent objects to Dr. Nunberg’s opinion as irrelevant because it is lacking in scientific basis. However, we do not rely on Dr. Nunberg’s ultimate opinions and conclusions regarding the word “redskins,” rather we look to the underlying data that is not in dispute which undeniably shows a drop-off in usage. This is corroborated by respondent’s expert, Mr. Barnhart who conducted a similar electronic database search, discussed infra. As to the data, respondent’s objection that the “uses that date from outside the pertinent time periods [are irrelevant] and are not reflective of Native Americans’ viewpoints,” is overruled. As noted above, the search encompasses the relevant time period, and is relevant in correlation to objection to use of this term by Native Americans.

Mr. Barnhart conducted a similar search using a Nexis electronic database group file featuring major newspapers, magazines and journals published between 1969 and 1996. He found that the term “redskin” or “redskins” appeared in 143,920 articles at least once. Similar to Dr. Nunberg’s initial search results, Mr. Barnhart reported that the results of his “redskin” database search were “overwhelming to be in the context of sports,” with less than two percent of the results referring to Native Americans.

Mr. Barnhart would not draw any inferences about the infrequency in which the term “redskin” or “redskins” was used to refer to Native Americans. He testified that it was not what he was asked to do and it would be a significantly greater project to determine whether there is any significance to the lack of occurrences. However, in his report he did, in fact, draw conclusions, when he concluded that the term REDSKIN “is acceptable in both formal and informal speech or writing of educated people.” The conclusion he drew was that its absence from the database references somehow supports, or at least does not refute, his finding that the term is part of standard English and acceptable for formal and informal speech or writing. Such a conclusion stands in contradiction to the stark drop off in usage as shown by Dr. Nunberg’s research and supported by Mr. Barnhart’s own research which shows, inter alia, use of the term in many literary sources until 1969 where his search of the Nexis database spanning the years 1969-1996 reveals only 2 percent of the appearances of “redskin(s)” related to “Amerindians” (96 percent referenced respondent’s team and 2 percent referenced Miami University’s former team name), and the addition of the usage labels in the dictionaries during the same time period. Mr. Barnhart confirms that for the last thirty years (from 1967 to 1997 the date of the deposition) “the overwhelming context in which the term redskins is used in general literature” is in a sports context. To the extent respondent relies on this data to show that because it is printed in newspapers reporting on the professional football team by that name it is not disparaging in that context, Mr. Barnhart testified that his report is not based on Native American response to the term in this context, therefore, we cannot rely on this data to make such a finding or to even raise doubt about other findings, regarding the viewpoint of Native Americans.

Mr. Barnhart testifies that while the term “redskin(s)” was not disparaging “as applied to American Indian persons” in 1967-1985 it might have been offensive. As noted above, Mr. Barnhart attaches intent of the speaker to the word disparaging and his view of offensive is more in line with the meaning of disparaging in the context of Section 2(a).

NCAI Resolution

The Executive Council of the National Congress of American Indians (“NCAI”), “the oldest and largest intertribal organization nationwide representative of and advocate for national, regional, and local tribal concerns,” passed a resolution in 1993, entitled the “Resolution in Support of the Petition for Cancellation of the Registered Services Marks of the Washington Redskins AKA Pro-Football Inc.” The resolution includes in pertinent part the following:NCAI is the oldest and largest intertribal organization nationwide representative of and advocate for national, regional, and local tribal concerns; . . . .
[T]he term REDSKINS is not and has never been one of honor or respect, but instead, it has always been and continues to be a pejorative, derogatory, denigrating, offensive, scandalous, contemptuous, disreputable, disparaging and racist designation for Native American’s [sic]; and

[T]he use of the registered service marks identified in Exhibit B to this resolution by the Washington Redskins football organization, has always been and continues to be offensive, disparaging, scandalous, and damaging to Native Americans.Respondent objects to the NCAI resolution “as irrelevant, to the extent that it dates from a time period not relevant to issues in this proceeding.” Respondent further asserts that the District Court found it “irrelevant to the calculus.” The full quote from the District Court is set forth below:All of these resolutions were made after the relevant time frame, with no explanation by the TTAB as to how they ‘shed light’ on the relevant time period, and thus, are irrelevant to the calculus . . . [and] the TTAB made no findings of fact about the strength of this evidence.Pro-Football, Inc. v. Harjo, 68 USPQ2d at 1255.

We begin by stating that there is no question as to the authenticity or identity of this document. The stipulation by the parties is clear and unequivocal “all evidence admissible in [Harjo] shall be admissible in this proceeding” and only objections as to relevance were preserved for the evidence covered under paragraph one of the stipulation. The testimony by Ms. Chase, discussed infra, regarding the procedures by which the NCAI Executive Council passes its resolutions and as stated in the NCAI by-laws, and the other evidence of record showing NCAI membership (referenced infra in the findings of fact), is sufficient to support the credibility, reliability and trustworthiness of the resolution. In addition, Ms. Chase’s testimony along with other evidence sets out the circumstances under which the resolution was passed, i.e., that approximately 150 tribes were represented by NCAI at that time and at least one third of the tribal members were present to pass the resolution.

With regard to respondent’s relevancy objection, any statement made after each registration issued is not a statement from the time of registration; thus, based on respondent’s logic even testimony taken from individuals in 1993-1996 (i.e., during the Harjo litigation) would be statements about the witnesses’ opinions during the years 1967-1990, and as such, would be irrelevant. However, the mere fact that an opinion is voiced in 1993 does not mean the opinion was not held by that group or individual in the 1967-1990 time period. In Harjo, we note, the opinions about views from 1967-1990 given by the individual plaintiffs through testimony were accepted, by both the Board and the District Court. Here, we have a claim that the registered marks disparaged Native Americans when registered. We find that a resolution passed by an organization such as NCAI, which throughout the relevant time period represented approximately thirty percent of Native Americans, setting forth the past and ongoing viewpoint of the Native Americans it represents is clearly probative of the views of Native Americans held at the referenced time period. We accept individual testimony about views held in the past, therefore we accept a group statement about views held in the past, in particular here where the claim pertains to the views of a group and not individuals. Respondent’s objection on the basis of relevancy is overruled.

Deposition of JoAnn Chase
JoAnn Chase, a Native American, became Executive Director of the National Congress of American Indians on April 1, 1994, and provided testimony in 1996 about Resolution 93-11. Respondent’s objection to Ms. Chase’s testimony as being irrelevant because the NCAI resolution dates from a time period not relevant to this proceeding is overruled. Her testimony relates to the NCAI resolution that specifically addresses the time period with which we are concerned. Her testimony also provides contemporary and historical background on the organization.

Deposition of Harold Gross
In 1972, Harold Martin Gross was the Director of Indian Legal Information Development Service, a legislative oversight program. The mission of the Indian Legal Information Development Service was two-fold: (1) to provide career training to Native Americans in the fields of journalism, law and public affairs in the legislative process; and to provide legislative information to Native American tribes through a monthly magazine. The staff was comprised of Native Americans. Mr. Gross testified that they asked him to help them change the name of the Washington Redskins football team because “it was disparaging, insulting and degrading to American Indians.” In January 1972, Mr. Gross drafted a letter on behalf of his staff and sent it to Edward Bennett Williams, who was then partowner and president of the Washington Redskins football team. That letter led to a March meeting with Mr. Williams.

The following people attended that meeting along with Mr. Gross:Richard LaCourse, a representative of the Washington Bureau of the American Indian Press Association;Leon Cook, President of the National Congress of American Indians (NCAI);Ron Aguilar, District Representative of the National Indian Youth Council;Dennis Banks, District Representative of the American Indian Movement;Hany Geigomah, Assistant to the Commissioner of Indian Affairs and the Youth Representative from the Bureau of Indian Affairs;Laura Wittstock, Legislative Review Editor of the Indian Legal Information Development Service; andLaDonna Harris, President of the Americans for Indian Opportunity.At the meeting, the Native American attendees expressed their “reasons for objecting to the name of the team, and some of the trappings that went with it. And to present the reasons why [they] thought it should be changed.”

Respondent objects to Mr. Gross’ testimony and exhibits (e.g., the letter to Mr. Williams) as irrelevant because “the organization he formerly represented comprised at most seven Native American members and itself did not represent any Native American tribe or organization.” The objection is overruled. The opinions of seven Native Americans expressed during the relevant time period are obviously relevant to the merits of the petition. Moreover, we do not rely on the testimony for the viewpoint of the Indian Legal Information Development Service, the organization Mr. Gross represented. Rather, we rely on this testimony and evidence to show that NCAI’s opposition to use of the word “redskins” with respondent’s services existed as early as 1972, well in advance of the 93-11 resolution and during the relevant time period. NCAI’s president, Mr. Leon Cook, participated in that meeting and supported the position that respondent should cease use of the name “Redskins.” The “Recommendations to the Washington, D.C. Professional Football Team” from “Leon F. Cook, President, National Congress of American Indians,” et al., include the following:That the derogatory racial epithet “Redskins” be withdrawn as a team nickname for the professional football team of Washington, D.C.In 1972, NCAI represented approximately 30 percent of Native Americans. An article published in the Washington Daily News on March 30, 1972, discussing the meeting with Edward Bennett Williams includes the following excerpt:After Petite’s fist shaking speech, Williams closed this first meeting with the American Indians who claim his team nickname, ‘Redskins’ is a racial slur. The eleven Indian representatives included ... Leon Cook, president of the National Congress of American Indians which claims a membership of 300,000; Dennis J. Banks, national chairman of the American Indian Movement.129In addition, an article published in The Washington Post on Thursday March 30, 1972 includes the following:A DELEGATION OF 11 people representing a variety of Indian organizations ... Among the group ... requesting that ‘the derogatory racial epithet ‘Redskins’’ be banished from the Washington sports scene were ...Leon Cook, president of the National Congress of American Indians which claims a membership of 350,000 Indians, according to the protesting group’s informal leader, Harold Gross, an attorney for another Indian organization.130Harold Gross testified that he worked for NCAI in 1969 and would have first-hand knowledge as to the membership in that time period. This evidence regarding NCAI’s membership in the relevant time period, as well as its participation in the 1972 meeting serves to corroborate the statement in the 93-11 resolution that the term REDSKINS as used by the Washington Redskins “has always been … offensive, disparaging, scandalous, and damaging to Native Americans.”

NCAI’s decades-long challenge to the term “Redskins” is referenced in an article in the Lakota Times published September 16, 1992:The National Congress of American Indians has been battling against the racist use of Indians as mascots for decades. The battle has been uphill all the way because mainstream America does not see the term [Redskins] as offensive – because they are not American Indians. … Mr. Deloria who directed NCAI in the 1960’s and spoke out on the mascot issue then ... The grounds for cancellation of the federal registration include: The term ‘Redskin’ … is ... disparaging.Other evidence provides information regarding NCAI’s opposition to the name “Redskins” for the football team and the number of Native Americans represented by NCAI during the relevant time period. The state of Michigan issued a report addressing the use of Indian names and mascots in October 1988. The purpose of this report was to examine the presence of Native American stereotyping in Michigan education institutions. The Commission surveyed colleges, universities, high schools and junior high/middle schools. In addition, the Commission contacted Native American organizations in Michigan to solicit feedback on stereotyping of Native Americans. Respondent apparently lodged several objections to this report (it is included by bates numbers in the objections to documents referred to as “correspondence”); however, we only rely on the following reference in 1988 to NCAI in this report and there is no objection to that information.The National Congress of American Indians, the oldest and largest national Indian group in the U.S. also supports this organization’s efforts to have the Washington team’s name changed.In April 1993, the Miami University Senate held meetings to determine whether or not to abandon their team name REDSKINS, which they ultimately did. Dr. Britton Harwood made the following statement:The National Congress of American Indians, representing approximately 150 tribal governments, calls it [redskin] a racial slur.This number is further corroborated a June 3, 1991 letter from Dale Pullen, publisher of The U.S. Congress Handbook to Charlie Drayton, the Vice President of Communications for the Washington Redskins, submitted by respondent to show Native American support of the team.139 In his letter, Mr. Pullen wrote the following:The National American Indian Council, representing 70 per cent of the
American Indian population, would like 400 U.S. CONGRESS
HANDBOOKS for their D.C. meeting beginning June 7.
Ms. Lee Ann Tallbear, Executive Director, for the NAIC, called to see
how she might get books . . . .
Ms. Tallbear said that her group represents about 1.2 million
American Indians who do not live on reservations. The National
Congress of American Indians represent [sic] Indians living on
reservations (the remaining 30 percent).In 1995, there were approximately 500 recognized tribes in the United States; 150 would have been about one third in 1993. Ms. Chase also testified that there were between 100 – 400 members at the time the resolution was taken.
We further note that in addition to NCAI, the American Indian Movement (AIM) was represented at the 1972 meeting. AIM was founded in 1968 as stated in the following letter from Clyde H. Bellecourt, National Director of the AIM and William A. Means, President of International Indian Treaty Council, to Jack Kent Cooke dated December 20, 1991:The American Indian movement (AIM) is the foremost advocacy organization representing and defending the spiritual, cultural, political and treaty rights of the Indigenous (Indian) peoples in all of North, Central and South America. … The American Indian Movement, which was reborn here in Minneapolis, Minnesota in 1968 … The efforts by Indian people to cleanse organized sports, both within major league baseball, the national football league and hockey, as well high school and university athletic programs has been ongoing for years. … We have received hundreds of calls and letters both national and international in support of our efforts to change these demeaning names (i.e. Washington Redskins) … by sports teams and athletic programs.Letters of Protest
Petitioners submitted 19 letters from individuals identifying themselves or family members as Native Americans from across the United States representing a geographic cross section (South Dakota, Virginia, Florida, Nebraska, Iowa, Idaho, Minnesota, Georgia, Illinois), letters from three Native American organizations, one letter from the Otoe-Missouria Tribe, in which they protested the use of the term “Redskins” by respondent. A representative sample of excerpts from individual letters is set forth below:Since you continue not to believe that the term “Redskins” is not [sic] offensive to anyone, let me make this clear: The name “Redskins” is very offensive to me and shows little human interest or taste. I am a Comanche Indian from Oklahoma. Indians are having enough trouble trying to erase misconceptions about themselves without having to be hit in the face with it every day in the form of a football team or baseball team. If you think you are preserving our culture or your history, then may I suggest a change? To live up to your name, your team would field only two men to the opponents eleven. Your player’s wives would be required to face the men of the opposing team. After having lost every game in good faith, you would be required to remain in RFK stadium’s end zone for the rest of your life living off what the other teams had left you. (Which wouldn’t be much.) Since you would probably find this as distasteful as 300,000 Indians do, I would suggest a change in name. In sticking to your ethnic theme, I would suggest the Washington Niggers as a start. … This would start a fantastic trend in the league. We would soon be blessed with the San Fransisco [sic] Chinks, New York Jews, Dallas Wetbacks, Houston Greasers, and the Green Bay Crackers. Great, huh? Mr. Williams, these would be very offensive to many people, just as Redskins is offensive to myself and others. You can take a stand that would show you and the team as true believers in civil rights, or you can continue to carry a name that keeps alive a threatening stereotype to Indian people. People, Mr. Williams. We don’t want the Redskins!
… I, along with many other Native Americans, have tried over many years to reduce the level of opprobrium and prejudice surrounding American attitutes [sic] toward Native peoples. I urge that you consider an immediate change of name for your team and that your new name reflect in no way unfavorably on any of our national or ethnic groups.
… I must say that I am appalled at your [Jack Kent Cooke] callous attitude and comments concerning this issue. As a Native American I can assure you that I find the term “Redskin” offensive and derogatory. I don’t mind telling you that I find the name of your team totally objectionable. … I feel you’ve gotten off lightly with the concerns for this issue because the Indian population is not as large or vocal as the other minorities of this country. Because we are not highly visible that does not mean you can count us out of the human race. We deserve the right to be treated with equal respect and consideration that is entitled to any race. … Would you be offended if someone called you or a family member a derogatory racial nickname? Some of these nicknames are: honkie, wop, kraut, chink, potato head and nigger. When a Native American is referred to as a “redskin” then you are in essence calling them a name that is just as bad as those above. Would you be offended by any of these names? If so, then please reconsider your position. You people in Washington take so much care not to offend the minorities [in] your city. I don’t understand why this same care and consideration isn’t extended to other races in this country.
I object to the use of “redskins” for a football team.
I am an Oglala Sioux Indian living here on the Pine Ridge Indian Reservation in South Dakota. I am writing this letter concerning a matter that I feel is very important I believe that the name “Redskins,” is very demeaning to my Indian people. … Thank you for your kind attention to the matter.
… As a member of the Oneida tribe of Indians of Wisconsin, I find the team name [Redskins] very offensive and more of an ethnic slur which should have never been placed with the proud symbol of the team. … I am a big fan of the team and it’s collection of extraordinary talent, however, I remain adamantly opposed to the organization [sic] keeping the current team name.
The Washington Redskins must go! No, not the team, but the name, which is totally demeaning of Native Americans and reinforces a negative stereotype that is unjust and unwarranted. The term “redskins” is out of a period when there was a bounty on the heads of Indians and they were scalped. Eighty cents for a man’s skin, 60 cents for a woman’s skin and 20 cents for a child’s skin. It is a period in our history that every American should be ashamed of and the continued use of such a derogatory and offensive term is an abomination. Ben Nighthorse Campbell, the only Native American in the U.S. Senate, says that “the name Redskins carries the same negative connotation as some terms that blacks and whites find offensive. The word brings to mind a negative image of uncivilized persons and has no positive meaning.” Therefore, Mr. Cooke, despite your insistence to the contrary, there is no pride or honor associated with the name. The controversy is something that will not go away, will not disappear until the term “redskin” is banished from our vocabulary. … ps. Being of direct Native American descent, I find the name especially offensive.All but one of the letters were written at the end or just after the relevant time period, but do evidence the opinion of individual Native Americans across the United States, providing further corroboration that the viewpoint in the NCAI resolution represents a cross-section of Native Americans. We have not considered the at least letters from individuals other than Native Americans protesting the use of the name Redskins. Inasmuch as our determination of the issue of disparagement concerns the views of Native Americans, the 150 letters from non-Native Americans have limited probative value. While they may serve to indicate a broader consensus regarding the word, which may add to the weight of the evidence, we do not find it necessary to rely on this evidence.

Respondent's Evidence of Support for the Name
On January 16, 1992, the chief of the Modoc Tribe of Oklahoma sent the Washington Redskins a copy of the Inter-Tribal Council (comprising the Miami, Ottawa, Modoc, Peoria and Seneca-Cayuga Tribes of Oklahoma) “Resolution Supporting Use of Team Name ‘Redskins’ by the Professional Football Team in Washington, D.C.,” approving the name “as a positive image depicting Native American culture and heritage.”

In October 1991, the chairman of the Tulalip Tribes of Washington, Stanley G. Jones Sr., sent a letter to Senator John McCain, then-Vice Chairman of the Select Committee on Indian Affairs, stating that “[m]any of us are proud that sport teams use us and our symbols to represent them. . . . We are not offended by the Washington football team being called the Redskins.”

The “Tribal Leader of the Soboba Band of Indians located in San Jacinto, California,” Robert J. Salgado, sent a letter to Jack Kent Cooke, in January 1992, stating that he had “been impressed [by] the manner in which the Washington Redskins have portrayed the American Indian,” and further stating his support for the team.

The chief of the Choctaw Nation of Oklahoma, Hollis E. Roberts, sent a letter to the Washington Redskins Communications Department in January 1992, which covered the history of the Choctaws and connected that history with the use of American Indian names and images by sports teams. Chief Roberts stated:Sports teams traditionally adopt a namesake and image which they perceive as noble and powerful. The Washington Redskins is a team . . . that Indian people can be proud to be identified with.The chief concluded by expressing his support “of the Washington football team, the ‘Redskins.’”

The Principal Chief of the Seminole Nation of Oklahoma, Jerry G. Haney, sent a letter to Jack Kent Cooke in January 1992, expressing that the use of the “Redskins” name by the Washington football team is a source of pride.

The Vice President of the Pima-Maricopa Indian Community of Salt River in Scottsdale, Arizona, Merna L. Lewis, sent a letter to Ms. Jo Walter regarding the use of the name “Naperville Redskins” by a high school in Illinois. Ms. Lewis wrote that her Native American community did not object to the Naperville school using the name “Redskins” so long as it was used with honor and respect.

The principal chief of the Eastern Band of Cherokee Indians in North Carolina, Jonathan L. Taylor, also sent a letter to Ms. Jo Walter in July 1992, regarding the use of the name “Naperville Redskins.” Chief Taylor wrote that the use of the name “Redskins” by the school was a “great honor for all Native Americans.”

A 1992 newspaper article reported that the Mattaponi tribe did not object to the use of the name “Redskins” by the Washington football team. The tribal chief of the Mattaponi of King William County, Virginia, Webster “Little Eagle” Custalow, is quoted as saying that his tribe did not “disapprove of that name at all. The only thing I’ve asked them to do is to wear the helmets proudly. There’s an Indian head dress on the helmet and I asked them to keep that helmet high and not rub it in the dirt.”

The record also includes evidence regarding Native Americans using the word “redskins” in connection with their own sports teams:A sign at a Navajo Indian Reservation school: Red Mesa High School Home of the Redskins, with the photograph taken in 1989 and sent by Robert D. Kahn to Jack Kent Cooke on November 4, 1991;
A sports article in the April 30, 2010 issue of the Seminole Tribune (Fla.), referencing the “Lady Redskins” as one of the teams involved in
a tribal basketball tournament.Respondent also points out that its seventeenth draft pick in 1956 was Eagle Day, who was part of the Cherokee tribe.169 Day began his career with the Washington Redskins in 1959, as reported in this Washington Daily News article:When he arrived at training camp in July 1959, the Washington Daily News reported that “Eagle Day is an Indian who has always wanted to be a Redskin,” quoting Day as saying “I’m finally getting a chance to do what I wanted in the first place—play for the Redskins.”

Based on our review of the record within the confines of this narrow case and taking into consideration the stipulations that all evidence deemed admissible in Harjo is of record and all hearsay objections are waived to allow consideration of documents for the truth of the matter asserted, we find the following facts in the two categories.

Findings of Fact
General Analysis of the WordThe word REDSKIN on its face is and always has been a racial designation.The word REDSKINS is a plural of the word REDSKIN.The word REDSKIN on its face refers to the real or imagined skin color of Native Americans.Racial slurs often refer to real or imagined physical differences.Dictionary usage labels signal that a word is not part of standard vocabulary.Before 1966 no dictionary in this record included a usage label for the term REDSKIN.Beginning in 1966 and continuing to 1990, usage labels in dictionaries indicating the term REDSKIN to be offensive, disparaging, contemptuous or not preferred, first appear and then grow in number.From 1983 on, all dictionary entries in the Barnhart report include a usage label indicating the term is offensive, disparaging, contemptuous or not preferred.The National Congress of American Indians (NCAI) was founded in 1944.The record shows that NCAI began advocating against use of respondent’s name REDSKINS, in the 1960’s.The advocacy organization American Indian Movement (AIM) was founded in 1968 and its effort to rid sports teams of Indian names, including respondent’s name REDSKINS, has been ongoing for decades.Usage labels sometimes result from pressure groups trying to influence the lexicographer.From the mid-1960’s to 1996, the word ‘redskin(s)’ has dropped out of written and most spoken language as a reference to Native Americans.From at least the mid-1960’s to 1996, the words ‘Native American,’ ‘Indian,’ and ‘American Indian’ are used in spoken and written language to refer to Native Americans.The usage labels appear and the use of the word redskin(s) disappears because it is increasingly recognized that the term is offensive and disparaging during the relevant time period as Native Americans raise awareness about the offensive nature of the term redskin(s).

Native American Objection to Use of the Word Redskins for Football TeamsSince 1994, Jo Ann Chase has been the Executive Director of the NCAI.The membership of the NCAI consists of Native American tribes and individuals.Member tribes, through resolution, designate a delegate for the purpose of representing them in NCAI and voting on NCAI resolutions.The Executive Council of NCAI consists of the official representative delegates of the member tribes of the organization.The Executive Council is the decision-making entity for the organization.The member tribes vote on resolutions by voice vote which are usually unanimous.The quorum for the Executive Council is one third of the member tribes of the organization.The delegates attending the Executive Council vote on behalf of the tribes.Resolutions are read out before the membership prior to the vote.Resolutions are the policy of the NCAI.In 1996, 206 tribes were NCAI members.Approximately 150 tribes were members in 1993.On January 18-19, 1993 NCAI passed resolution 93-11 which reads in pertinent part:NCAI is the oldest and largest intertribal organization nationwide representative of and advocate for national,
regional, and local tribal concerns; …
[T]he term REDSKINS is not and has never been one of honor or respect, but instead, it has always been and continues to be a pejorative, derogatory, denigrating, offensive, scandalous, contemptuous, disreputable, disparaging and racist designation for Native American’s [sic] and
[T]he use of the registered service marks identified in Exhibit B to this resolution by the Washington Redskins football organization, has always been and continues to be offensive, disparaging, scandalous, and damaging to Native Americans.This resolution represents the view of the member tribes that the word REDSKINS has always been disparaging as used for the name of a football team, this includes 1967-1990.The president of NCAI is elected by the membership.In 1972 the president of NCAI, as a representative of NCAI, met with Edward Bennett Williams (then owner of the team) requesting that the team cease use of the name REDSKINS because it is disparaging.In 1972, the president of NCAI, along with others, requested that “the derogatory racial epithet “Redskins” be withdrawn as a team nickname… .”In 1972, NCAI represented approximately 300,000 Native Americans out of approximately 792,730.NCAI has been in existence since 1944 and between 1972 and 1993, a span of twenty years, the record shows that NCAI has represented approximately one third of Native Americans. It is reasonable to infer that NCAI represented approximately one third of Native Americans merely five years earlier in 1967.NCAI objected to respondent’s use of the word REDSKINS in the late 1960’s.NCAI objected to respondent’s use of the word REDSKINS in 1972.NCAI objected to respondent’s use of the word REDSKINS in 1988.NCAI objected to respondent’s use of the word REDSKINS in 1992.NCAI objected to respondent’s use of the word REDSKINS in 1993.Conclusions
As noted above, as was found in the Harjo case, both by the Board and the District Court, and conceded by respondent, “the meaning of the matter in question,” retains the core meaning Native American when used as the name of respondent’s sports team. More specifically, the term “redskin(s)” as used by respondent in its registered marks when used in connection with professional football retains the “likely meaning” Native Americans. Much of respondent’s evidence is directed to the first part of the test. Respondent’s argument regarding “secondary meaning” in the sense that it has “a secondary or alternate meaning” denoting a football team, is not persuasive in that the “secondary meaning” has not stripped the word “redskins” of its “ethnic” meaning. See Squaw Valley, at 1282 (emphasis added) (Squaw Valley ski resort meaning of squaw is “likely meaning” “rather than the meaning of Native American woman or wife”).

We turn then to the second question, “was the meaning one that may have disparaged” a substantial composite, which need not be a majority, of Native Americans, at the times of the registrations. The crux of this case is whether or not this record supports petitioners’ contention that the answer to that question is yes. Respondent contends that it does not and characterizes the record as, at most, showing a handful of individuals (the Harjo petitioners, the current petitioners, the letter writers, a few individuals from various organizations) who have their own individual opinion. Such a characterization, however, ignores, and is contradicted by the substantial evidence of record.

NCAI Resolution 93-11 represents the views of a substantial composite of Native Americans. NCAI consists of member tribes from across the United States and they voice their collective opinion through the Executive Council by resolutions. A resolution from the oldest Native American organization composed of tribes from across the United States and structured in a manner to represent the collective opinion of its membership through resolutions is strong evidence of the views of Native Americans. The NCAI members throughout the relevant time period represent approximately 30 percent of Native Americans.

The statement about Native Americans’ past views of the word REDSKINS in the 1993 resolution is corroborated by the meeting held with the former owner Edward Bennett Williams in 1972. At the meeting, the president of NCAI at the time, Mr. Leon Cook, represented that Native Americans find the term REDSKINS to be a racial slur. Respondent characterizes Mr. Cook’s views as solely his own and opines that he merely represented himself at this meeting. The president of NCAI is elected by the membership to represent them. It is unreasonable and illogical to characterize the views regarding something of importance to the members of an organization as only belonging to that individual president where he is attending in his capacity as the president of that organization. It is equally unreasonable and illogical to reduce Mr. Cook’s representative capacity in such a manner. His attendance at this meeting was, not surprisingly, referenced as representing an Indian organization, both by the press and by Mr. Williams himself.

The trend in dictionary usage labels also corroborates the time frame of objections from Native Americans starting in the late sixties and continuing through the nineties as lexicographers begin and finally uniformly label the term as “offensive” or “disparaging.” The recognition that this racial designation based on skin color is disparaging to Native Americans is also demonstrated by the near complete drop-off in usage of “redskins” as a reference to Native Americans beginning in the 1960’s.

The record establishes that, at a minimum, approximately thirty percent of Native Americans found the term REDSKINS used in connection with respondent’s services to be disparaging at all times including 1967, 1972, 1974, 1978 and 1990. Section 2(a) prohibits registration of matter that disparages a substantial composite, which need not be a majority, of the referenced group. Thirty percent is without doubt a substantial composite. To determine otherwise means it is acceptable to subject to disparagement 1 out of every 3 individuals, or as in this case approximately 626,095 out of 1,878,285 in 1990. There is nothing in the Trademark Act, which expressly prohibits registration of disparaging terms, or in its legislative history, to permit that level of disparagement of a group and, therefore, we find this showing of thirty percent to be more than substantial.

Respondent has introduced evidence that some in the Native American community do not find the term “Redskin” disparaging when it is used in connection with professional football. While this may reveal differing opinions within the community, it does not negate the opinions of those who find it disparaging. The ultimate decision is based on whether the evidence shows that a substantial composite of the Native American population found the term “Redskins” to be disparaging when the respective registrations issued. Heeb Media LLC, 89 USPQ2d at 1077. Therefore, once a substantial composite has been found, the mere existence of differing opinions cannot change the conclusion.

In view of the above, petitioners have shown by a preponderance of the evidence that a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with respondent’s services during the relevant time frame of 1967-1990. Accordingly, the six registrations must be cancelled as required under Sections 2(a) and 14(3) of the Trademark Act.

Laches Defense
In Harjo v. Pro Football, Inc., 30 USPQ2d 1828, the Board held that respondent’s laches defense was not applicable because there was a public policy interest at stake rather than just the petitioners’ personal interest.[T]here exists a broader interest – an interest beyond the personal interest being asserted by the present petitioners – in preventing a party from receiving the benefits of registration where a trial might show that respondent’s marks hold a substantial segment of society up to public ridicule, [and] we will not deny petitioner the right to attempt to make their case by allowing
respondent’s equitable defenses [laches].Id. at 1831.

On appeal, however, the U.S. District Court for the District of Columbia reversed the Board and held that the Trademark Act does not unequivocally bar respondent’s laches defense and permitted respondent to assert laches as an affirmative defense. Pro-Football, Inc. v. Harjo, 57 USPQ2d at 1145, aff’d, 75 USPQ2d at 1527. Nevertheless, the District Court noted that the applicability of laches “is dependent upon the equities of the factual scenarios within which it is raised.” 57 USPQ2d at 1145. In the order issued in this case on May 31, 2011, the Board stated that “[b]ecause … this cancellation proceeding is essentially a relitigation of what transpired in the Harjo case before the Board, we will follow the precedent of the D.C. Circuit Court of Appeals in Pro-Football, Inc. v. Harjo, 75 that petitioners maintain that laches does not provide a defense to a disparagement claim, this issue is preserved for appeal.”

The America Invents Act, enacted in September 2011, changed the venue for appeals to District Court from USPTO inter partes proceedings to the U.S. District Court for the Eastern District of Virginia from the U.S. District Court of the District of Columbia. See Pub. L. No. 112-29 § 9(a), 125 Stat. 284 (2011) (to be codified at 15 U.S.C. § 1071(b)(4)). Accordingly, subsequent judicial review of this dispute, if any, will occur either in the U.S. District Court for the Eastern District of Virginia in the Fourth Circuit or in the Court of Appeals for the Federal Circuit, but not in the D.C. Circuit. In view thereof, petitioners filed a motion to reconsider the legal standard for laches in light of the America Invents Act.

Although the Board earlier ordered that “any motion or brief including a reargument of a previously decided issue in this proceeding will be deemed to be a nonconforming brief and will be given no consideration,” and specified that the decision in the May 31, 2011 Order regarding laches was a final decision on the applicability of the defense, we find that the passage of the America Invents Act sufficiently changes the circumstances in this case so as to justify revisiting the issue.

We hold that laches does not apply to a disparagement claim where the disparagement pertains to a group of which the individual plaintiff or plaintiffs simply comprise one or more members. First, laches is an equitable defense. A.C. Aukerman Co. v. R. L. Chaides Constr. Co., 960 F.2d 1020, 22 USPQ2d 1321, 1328 (Fed. Cir. 1992) (en banc). It is difficult to justify a balancing of equities where a registrant’s financial interest is weighed against human dignity. To apply laches to this type of claim contemplates the retention on the register of a mark determined by the Board to be a racial slur, in blatant violation of the Trademark Act’s prohibition against registration of such matter, merely because an individual plaintiff “unreasonably delayed” in filing a petition to cancel. For example, if Reg. No. 217,067, renewed in 1946 for twenty years, i.e., until 1966, for the mark NIGGER BABY BRAND for oranges and grapefruit were still active, individual members of the group referenced by such matter would be barred from seeking cancellation if they “unreasonably delayed” in seeking such relief. We add that the decision of the Court of Appeals for the District of Columbia Circuit, even though it countenanced application of laches in the Harjo decision, actually provides support for not applying the doctrine in cases such as this. If plaintiffs are created every day as individual members of the referenced group mature to age 18, the laches defense will never yield the registrant of a racial slur the repose it seeks.

Second, courts and the Board have routinely held that where there is a broader public policy concern at issue, the equitable defense of laches does not apply. See Ultra-White Co. v. Johnson Chem. Indus., Inc., 465 F.2d 891, 175 USPQ 166, 167 (CCPA 1972) (public interest in preventing likelihood of confusion prevails over a laches defense); Linville v. Rivard, 41 USPQ2d 1731, 1733 n. 5 (TTAB 1997), aff’d on other grounds, 133 F.3d 1446, 45 USPQ 1374 (Fed. Cir. 1998) (laches is unavailable against abandonment); Bausch & Lomb, Inc. v. Leupold & Stevens Inc., 1 USPQ2d 1497, 1499 (TTAB 1986) (laches is not available against a claim of descriptiveness or fraud); Int’l Assn. of Fire Chiefs, Inc. v. H. Marvin Ginn Corp., 225 USPQ 940, 947 (TTAB 1985), rev’d on other grounds, 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986) (laches is not available where the petition to cancel is based on genericness of the registered matter because it would frustrate Section 14(c) of the Trademark Act that a registered mark may be cancelled at any time on the ground that it is generic); W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co. , 146 USPQ 313, 316 (TTAB 1965), aff’d, 377 F.2d 1001, 153 USPQ 749 (CCPA 1967) (“laches is not available to a defendant in a proceeding wherein, as here, the adverse party is claiming in essence that the mark in question inherently cannot function as a trademark” because “it is within the public interest to have registrations which are void ab initio stricken from the register and this interest or concern cannot be waived by the inaction of a single person or concern, no matter how long the delay persists.”); Midwest Plastic Fabricators, Inc. v. Underwriters Laboratories, Inc., 5 USPQ2d 1067, 1069 (TTAB 1987) (laches does not apply against a claim that respondent does not control the use of a certification mark because of the public interest in making sure that certification marks are properly controlled); compare Bridgestone/Firestone Research Inc. v. Auto. Club, 245 F.3d 1359, 58 USPQ2d 1460, 1463-64 (Fed. Cir. 2001) (laches may be an affirmative defense against a Section 2(a) false suggestion of a connection claim because it is designed to protect a single person or institution from exploitation of their persona, not to protect the public or a broader group).

In this case, it cannot be disputed that there exists a broader public interest than that of the individual petitioners in preventing respondent from receiving the benefits of registration because respondent’s marks may have disparaged a substantial composite of Native Americans at the time. The fact that this claim falls within the category of claims that pertain to a broader public interest is made clear by the elements of the claim that plaintiffs must prove, i.e., that a substantial composite of the referenced group find the term to be disparaging. Thus, there is an overriding public interest in removing from the register marks that are disparaging to a segment of the population beyond the individual petitioners.

While the Fourth Circuit has not addressed whether laches applies to a claim that a term disparages a substantial composite of an ethnic or cultural group, the decisions of the Fourth Circuit prohibiting laches when confusion is inevitable suggest that the Fourth Circuit would prohibit the affirmative defense of laches in this case. See Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 38 USPQ2d 1449, 1453 (4th Cir. 1996) (“in consideration of the public interest, estoppel by laches may not be invoked to deny injunctive relief if it is apparent that the infringing use is likely to cause confusion.”). In Sara Lee, the Fourth Circuit reversed the lower District Court because “the court did not consider the public interest in avoiding confusion.” Id.; see Lyons P’ship L.P. v. Morris Costumes Inc., 243 F.3d 789, 58 USPQ2d 1102, 1108 (4th Cir. 2001); Resorts of Pinehurst, Inc. v. Pinehurst Nat’l Corp., 148 F.3d 417, 47 USPQ2d 1465, 1469 (4th Cir. 1998) (“strong proof of likelihood of confusion—indeed, actual confusion—trumps the defenses of laches and acquiescence.”).

However, if it was held in any appeal from this decision that the doctrine were to apply, to prevail on its laches defense, respondent must prove that there was undue or unreasonable delay by each of the petitioners in filing the petition for cancellation, and prejudice to respondent resulting from the delay. Bridgestone/Firestone v. Auto. Club, 58 USPQ2d at 1462; see also A.C. Aukerman Co., 22 USPQ2d at 1328) (there are two elements to laches: (i) unreasonable and inexcusable delay and (ii) prejudice or injury to the defendant). The application of laches depends on a balancing of the length of the delay and the seriousness of the prejudice with a focus on the reasonableness of the delay. Id. at 1329.

On this record, we find that respondent has not shown (1) that any one of the plaintiffs has unreasonably delayed in bringing the petition to cancel, in view of the pending Harjo litigation because the pendency of that case in court excused inaction; (2) that the 11 and 15 month delays by plaintiffs Tsotigh and Pappan were inexcusable or unreasonable; or (3) that is has been prejudiced, i.e., that there has been economic prejudice due to the delay.

Amanda Blackhorse turned 18 on February 20, 2000. Phillip Martin Gover turned 18 on October 1, 2000. Courtney Tsotigh turned 18 on August 22, 2005. Marcus Briggs-Cloud turned 18 on December 31, 2001. Jillian Pappan turned 18 on May 9, 2005. The pending Harjo litigation provided excusable delay at least until June 2008, i.e., for the entire period that case was pending, until the District Court issued its final opinion on the issue of laches as to one plaintiff. In 2005, the D.C. Circuit retained jurisdiction over the case, including the pending appeal of the decision on the disparagement claim, and remanded the case to the District Court to apply the defense of laches, incorporating the age of majority requirement, to one plaintiff. Pro-Football Inc. v. Harjo, 415 F.3d 44, 75 USPQ2d 1525, 1529 (D.C. Cir. 2005); Pro-Football Inc. v. Harjo, 567 F. Supp. 2d 46, 87 USPQ2d 1891, 1893 (D.D.C. 2008). However, the appeal of the disparagement claim was never addressed by the D.C. Circuit apparently because it was “overshadowed by the defense of laches.” Pro-Football v. Harjo, 565 F.3d 880, 90 USPQ2d 1593, 1594 (D.C. Cir. 2009). After the District Court found laches applied to the remaining plaintiff, that decision was appealed and the D.C. Circuit narrowed its decision to only that issue.

Notwithstanding the pending Harjo litigation, Pappan and Tsotigh were young adults and were entitled to assess the situation and determine whether it was in their best interest to file the petition for cancellation and then act in accordance with that assessment. Respondent has shown nothing more than a minimal delay in seeking cancellation. In this regard, respondent has not cited, nor have we found, any cases supporting such a minimal delay as being sufficient to support laches. See Piper Aircraft Corp. v. Wag-Aero, Inc., 741 F.2d 925, 223 USPQ 202, 207 (7th Cir. 1984) (“We note that two years has rarely, if ever, been held to be a delay of sufficient length to establish laches.”).

As of 1999, when the Board issued its decision in Harjo to cancel the registrations, the status of those registrations was in question up until, at least, the District Court’s decision on remand in 2008. Throughout this time, as the record demonstrates, respondent continued to invest and build its brand. Respondent’s evidence of purported economic prejudice covers the alleged delay period 2000-2006/7 which is concurrent with the pending Harjo litigation. Thus, it is impossible to distinguish the possible monetary or investment loss that might have accompanied ultimately losing the Harjo case from losses that might be incurred as a result of ultimately losing the subsequent Blackhorse case filed during the pendency of the Harjo litigation. Clearly respondent was not deterred by Harjo from investing in its brand, and an adverse decision in the present litigation would not have prevented respondent’s loss of monetary investments had the current plaintiffs brought their suit earlier, inasmuch as it still would, of necessity, have been after Harjo began in order for them to reach the age of majority. While specific evidence of reliance is not required to show prejudice, there must be some nexus between a delay in filing the suit and the expenditures. A.C. Aukerman Co. v. R. L. Chaides Construction Co., 22 USPQ2d at 1329. There is nothing in the record to indicate that respondent’s business decisions regarding investment in its brand and marks has been influenced in any way by the pendency of this cancellation proceeding.

In view of the above, respondent’s invocation of the laches defense fails.