Clear and Convincing Disparagement: An Argument for a Higher Evidentiary Standard for When the T.T.A.B. Considers Cancelling a Well-Known, Tenured Trademark

– John C. Thomas III

There has been considerable dispute about the continuing use of the trademark “Redskins” by Washington, D.C.’s NFL franchise. Critics claim the word “redskin” is a racial epithet offensive to Native Americans. The franchise is now at risk of losing federal trademark protection. Controversy aside, changing the brand could come with indirect economic harm naturally involved with clearing out old inventory and the potential loss of brand equity and fan loyalty. There should be a higher evidentiary standard, including clear and convincing evidence, to prove disparagement when the Trademark Trial and Appeal Board (TTAB) considers cancelling a well-known and tenured trademark, as compared to when a trademark is initially reviewed for registration.

In June 2014, the TTAB cancelled six federal trademark registrations owned by Pro-Football in the case of Pro-Football v. Blackhorse. 11 U.S.P.Q.2d (BNA) 1080 (T.T.A.B. 2014). The Blackhorse team appealed, but a U.S. District Court judge upheld the lower court. Since this case, the Supreme Court has reviewed, Matal v. Tam, which involved the denial of a trademark to a rockband named “The Slants.” On June 19, 2017 the court ruled unanimously in favor of Tam, holding that a key section of federal law banning trademarks that “may disparage” was a violation of the First Amendment. It is this section of the 1946 Lanham Act that Native Americans relied upon to argue that the Redskins should be stripped of their trademark. . Regardless of the particulars of the case against the Washington Redskins, a higher evidentiary standard should be required in light of the vast issues associated with an at-risk tenured trademark. This Note articulates rationales for a heightened standard in cancellation proceedings that may be applicable to other provisions in Lanham Act § 2(a), where an erroneous decision for the petitioner could have devastating effects on a mark owner.

Abstract Written by Hannah M. Williams, 2018