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August 15, 2014

OF REDSKINS AND ESKIMOS: Trademarks in Trouble?

By Steven Z. Raber

It has been widely reported that the United States Patent & Trademark Office (USPTO) revoked six trademarks belonging to the Washington entry in the National Football League (NFL), generally known as the Washington Redskins.

Under American trademark law, trademark registrations may be cancelled if they are found to be offensive or inappropriate. An arm of the USPTO, the Trademark Trial & Appeal Board (TTAB), determined that REDSKIN is disparaging to a substantial number of Native Americans. The team takes a different view and has announced that it has filed an appeal of the TTAB’s decision to the U.S. District Court for the Eastern District of Virginia.

It is interesting to note that the NFL club owns Canadian trademark registrations for WASHINGTON REDSKINS and for REDSKINS. These trademarks were registered in the early 1980s, at a time when, arguably, the public was less sensitive to minority rights. Given the situation in the U.S., the question arises as to whether these registrations may now be challenged in Canada due to the change in social landscape.

Canada’s Trade-marks Act does not have in it provisions as broad as those in the U.S. legislation. The closest is ss.9(1)(j), which provides as follows:

9. (1) No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for,

(j) any scandalous, obscene or immoral word or device.

None of the words “scandalous”, “obscene”, and “immoral” is defined in the Act or regulations.

Two cases were located where this sub-section was considered. In one, the Federal Court rejected the argument that the trademark MISS NUDE UNIVERSE contains a word with immoral connotations and held that the word “nude” was not scandalous, obscene, or immoral.

In the second decision, the Federal Court dismissed the allegation that a trademark reproducing the design of a serpent was obscene, scandalous, or immoral as it was a symbol shared by the cross bearers of the Grail Message and, therefore, was of spiritual value.

It would appear that an application based on proposed use or use in Canada may be registered even if it contains some element that is offensive or inappropriate. The only exception would appear to be trademark applications based on registration and use abroad – only in that circumstance may an application be refused if it is “contrary to morality or public order”.

Given the foregoing, it would seem that the Washington football club’s Canadian registrations are not in jeopardy. If they were, one would have to consider whether the registrations of another football team, the Canadian Football League’s Edmonton Eskimos, could next be attacked. The Edmonton club has registered EDMONTON ESKIMOS and has an outstanding application for ESKIMOS, which was filed in late 2012.

It will be interesting to see how the American courts deal with the controversial REDSKINS marks, and whether anyone will take aim at Edmonton's ESKIMOS.

Steven Z. Raber, LL.B., F.I.P.I.C., is a lawyer, trained mediator and registered trademark agent. He may be reached by direct telephone at (204) 957-8304, by direct facsimile at (204) 954-0304, or by email at stevenraber@fillmoreriley.com

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