- - Friday, June 20, 2014

Legal experts say that the executive agency that stripped the Redskins of its trademark will face the very difficult task of proving that a reasonable person of ordinary sensibilities in the Native American community would view the name and logo as offensive once the suit is heard in federal court.

Robert Raskopf, an attorney for the team told The Washington Times in a telephone interview that the team will be filing for a completely new trial — a trial de novo — in U.S. District Court for the Eastern District of Virginia before the appellate time expires in 60 days, and that the team expects to win their case.

“We will file something similar to what we filed last time, and once we file, the USPTO will not have the authority to cancel the mark as long as the litigation is continuing.” Mr. Raskopf told The Times.

“There have been some erroneous statements by people saying the marks are cancelled, but they are not cancelled unless this entire case goes the wrong way, and we obviously think that’s never going to happen. The marks are only scheduled for registration, but they cannot be cancelled until the entire process is over. … Our registrations are valid and in full force in effect,” he said.

A group of plaintiffs filed a similar Trademark and Trial Appeal Board complaint against the Redskins in 1999, but the team ultimately prevailed in a 2003 federal court victory.

Contrary to reports that the standard for the case is going to be whether the term was offensive at the time the mark was registered, experts say that the actual test will be whether or not a representative Native American of ordinary sensibilities today would view the mark as offensive.

“The reason the media may be getting it wrong is because most cases involving scandalous subject matter are based on registration rather than an attempt at cancellation and so the timing is reversed,” said Steve Greenberg, an internationally renowned intellectual property attorney and former adjunct professor at the University of Florida Levin School of Law.

“It would make no sense if the test was based on whether or not the mark offended anyone at the time of registration because many trademarks were registered decades ago. You need to get sworn affidavits from people to prove your case, and you can’t get an affidavit from someone who is deceased,” he said.

The remedy for a cancelled trademark holder is either to appeal directly to the U.S. Court of Appeals for the Federal Circuit in Washington, D.C., or sue the USPTO Trademark Trial and Appeals Board (TTAB) in U.S. District Court.

Whereas a federal circuit appeal would only determine if the USPTO misapplied the law, suing the federal agency in U.S. District Court would grant the NFL a trial de novo on the facts of the case, which experts say could place the government in a precarious position.

Mr. Greenberg said that a federal court de novo trial means that the government would have a much higher burden than the one they faced before the TTAB where the executive agency only considered the views of the politically charged plaintiffs who brought the case.

“If the NFL is successful in the initial stage of their lawsuit, and they can demonstrate that a reasonable person of ordinary sensibilities who faces the same circumstances as those identified by the mark at issue [in this case a Native American person] would not view the mark as offensive, then the burden would shift to the government to prove that in fact a representative Native American would in fact find the use of the mark Redskins offensive,” he explained. “That is not an easy thing to do.”

Mr. Raskopf concurred with Mr. Greenberg’s assessment, saying that, “We’re talking about millions of Native Americans as opposed to just a few plaintiffs. … You can’t project the plaintiffs’ opinion on the entire [Native American] population.”

Mark Schultz, a senior scholar and co-director of the Center for the Protection of Intellectual Property at the George Mason School of Law, said the government will face a much greater challenge in a federal court than they did at the trademark office.

“The TTAB has a very limited set of procedures, and there is a very limited opportunity to present evidence as opposed to what could happen in a full-blown trial in federal court. Going to federal court will be more challenging and more expensive for both parties, but given what’s at stake, I’m sure the Redskins and the NFL will gladly incur the costs.”

Even if the NFL lost a future U.S. District Court case, they would still hold many common-law rights, and continue to enjoy many state and federal legal remedies available to prevent trademark violations.

“Even if the trademarks were cancelled years from now, if all went wrong, we could still use our mark because it’s a common-law brand, and we can sue anyone we want who we think is infringing,” Mr. Raskopf said. “No one can stop us from using it.”

In such a scenario, the Redskins would still hold valuable federal rights under the Federal Trademark Dilution Statute, which allows a holder of a “famous mark” to enforce its rights irrespective of whether or not a federal registration exists. More than half of the States in the Union provide for anti-dilution legislation apart from the Lanham Act giving the NFL plenty of weaponry in its arsenal to preserve and continue using the Redskins mark.

Still, the decision could have other consequences for the team and the league.

“This decision stripped them of their U.S. Trademark registration, which means they will no longer have protection from the U.S. Customs service or use of the federal anti-counterfeiting statute,” he explained. “It is a blow to the legitimacy of their rights, and there is also a widespread perception that they have lost their rights, which could make things complicated and encourage people to commit violations against them.”

When asked whether or not he believed the TTAB’s decision was politically influenced by President Obama’s recent statements that he believed the Redskins’ mark was offensive, Mr. Raskopf said he hoped that was not the case.

“I would hope beyond hope that no one would ever be driven by politics to make a decision on the legal, substantive merits of a lawsuit that we didn’t start,” he said. “If people want to comment on the case and express their own personal views, God bless them, that’s America, but I would hope nothing like that would be going on here. That would shake me to my core, and I’d lose a lot of trust in my government.”

Jeffrey Scott Shapiro is an investigative journalist and a lawyer who works with MDB International.

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