Martza Majstoravich

28 U.S.P.Q.2d (BNA) 1715 

Suzan Shown Harjo, Raymond D. Apodaca, Vine Deloria, Jr., Norbert S. Hill, Jr., Mateo Romero, William A. Means, and Manley A. Begay, Jr. v. Federal League of Hockey, Inc.

Trademark Trial and Appeal Board

2007 TTAB LEXIS 17; 28 U.S.P.Q.2d (BNA) 1715

July 5, 2007, Argued

July 12, 2007, Decided

OPINION:

Before Majstoravich, Lacy, and Brennan, Administrative Trademark Judges

By the Board:

Petitioners, Suzan Shown Harjo, Raymond D. Apodaca, Vine Deloria, Jr., Norbert S. Hill, Jr., Mateo Romero, William A. Means, and Manley A. Begay, Jr., acting on behalf of Native Americans, petition to cancel Registration No. 1,023,787 for the mark CHIEFS issued July 17, 1966 to the Federal League of Hockey, Inc. [*18]

Petitioners allege the term “CHIEF” is an offensive, degrading, insulting, and defamatory allusion to Native Americans and the use of the trademark “CHIEFS” for Native American tribes violates Section 2(a) of the Trademark Act (15 U.S.C. § 1052(a)) which states in part, “No trademark… shall be refused registration on the principal register on account of its nature unless it– (a) consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Based on Section 2(a), the petitioners seek to cancel the registration of this trademark.

In order for the petitioners to bring this action, they must demonstrate they have a standing in this lawsuit. “[A] party may establish its standing to oppose or to petition to cancel by showing that it has a real interest in the case, that is, a personal interest beyond that of the general public. There is no requirement that actual damage be pleaded and proved in order to establish standing or to prevail in an opposition or cancellation proceeding.” Books on Tape, Inc. v. Booktape Corp., 836 F.2d 519, 5 U.S.P.Q.2d 1301 (Fed. Cir. 1987). The petitioners, representing Native American tribes in the United States, claim they have a personal interest in the present case due to the trademark’s defamatory representation of Native Americans. We hold the petitioners, [*19] as representatives for Native Americans, have a standing to bring this action against the Federal League of Hockey for cancellation of the registration of the mark for the Charlestown Chiefs.

Rather than focus on whether the trademark “Charlestown Chiefs” is disparaging, this Court instead will address whether it is defamatory to Native Americans. “The Third Circuit has explained the distinction between defamation and disparagement this way: defamation affects the reputation of another, while disparagement calls into question ‘the existence or quality’ of another’s property.” Siegrun D. Kane, Trademark Law: A Practitioner’s Guide, 14-16 (4th ed. 2002)) (quoting US Healthcare, Inc. v. Blue Cross of Greater Phila., 898 F.2d 914, 924 (3d Cir. 1990)). The petitioners do not allege the “Chief” trademark is disparaging to another’s property, instead they allege it is defamatory to Native Americans.

To determine whether this mark is defamatory to Native American tribes, we must look at the context in which the trademark was adopted. “That is, the case will be determined by deciding, whether, at the time these registrations issued, the various marks were scandalous” and defamatory. Harjo v. Pro Football, Inc., 1994 TTAB LEXIS at 13. In 1979 Anita McCambridge, owner, bought the Chiefs from George Preston Marshall, late owner of the Washington Redskins. Marshall adopted the name Charlestown Chiefs in 1966 and then prematurely sold the team anticipating he would be enjoined from owning two professional sports teams due the decision in NASL v. NFL for cross-ownership. NASL, 670 F.2d 1249 (2d Cir. 1982). Marshall sold the team without reason after the claim presented in NASL was dismissed. Nevertheless, in 1979, Marshall sold the Charlestown Chiefs to McCambridge claiming he wanted to focus his attention on his professional football team, the Washington Redskins. [*20]

Putting the adoption of the team name into context does not help the respondents. Marshall’s views of Native Americans are shown through his adoption of the name the Washington Redskins when he moved his professional team to Fenway Park. Marshall’s reason for the change in name was to distinguish the Redskins from the Boston Braves. Marshall was often described as a bigot, and he was one of the last owners to allow African-Americans to play on his team. [citation omitted] Marshall finally allowed integration when ordered by Interior Secretary Stewart Udall. Another example of Marshall’s character is demonstrated by how he described the Redskin team colors as “burgundy, gold, and Caucasian.” Due to these factors, Marshall’s actions show he did not embrace diversity.

However, despite these aspects of Marshall’s persona, the petitioners fail to demonstrate how the trademark itself is scandalous given the context in which it was adopted. The Charlestown Chiefs do not have a fight song, and no logos with a Native American figurehead appear on any of the uniforms. The trademark solely consists of the name “Charlestown Chiefs” emblazoned across the team jersey with the colors white, yellow, and blue. The closest thing the team has to a mascot is the three Hanson brothers whose violent antics turned the team around in the eyes of the public. In a similar case, Munson v. State Superintendent of Public Instruction, 1998 Wisc. App. LEXIS 165, the plaintiffs demonstrated how the school’s mascot’s dress, the fight song, and the logo were offensive through using a stereotype to depict Native Americans. However, Munson is distinguishable from our present case due to the Chief’s trademark being limited to the team name. Based on the lack of evidence showing how the trademark is offensive and degrading, it does not seem likely the reasonable fan would see “Chief” as derogatory [*21] towards Native Americans based on the team name alone. In essence, the petitioners fail to demonstrate how the name “Chief” is defamatory to Native Americans.

In conclusion, the Board has no basis on which to order a cancellation of Registration No. 1,023,787 for the mark “CHIEFS.”

IT IS SO ORDERED:

In view of the foregoing, petitioner’s motion is DENIED.

DISSENT

LACY, J., dissenting:

Petitioners allege the term “CHIEF” is an offensive, degrading, insulting, and defamatory allusion to Native Americans. The use of the trademark, as well, as the “thuggish” image the Chiefs have recently displayed on the ice only adds insult to injury for Native American tribes. Traditionally, when the majority of hockey teams are named after animals or extreme acts of nature (Carolina Hurricanes) to depict the coveted savagery of its team, it is relatively easy to understand why Native Americans are upset about the use of this trademark. Unfortunately, no existing trademark law addresses the issue at hand. [*22]

In terms of a remedy, the Court should consider Munson v. State Superintendent of Public Instruction. When the school received complaints about its choice of “Indians” as mascot, the administration tried to tactfully handle this delicate situation. Munson, 1998 Wisc. App. LEXIS 165, at *6-7. The school altered the mascot’s costume and fight song, and the administration reduced the use of “Indians” as a logo. Id. The school’s administration also solicited ideas from students for a different mascot. Id. at 19. When the Charlestown Chiefs are sold to owners in Florida, I would invite the new owners to consider changing the name of this hockey team. By following the lead taken in Munson, and allowing fans to take part in renaming the team, the owners could be cultivating a fan base in this new location.

Therefore, I respectfully dissent.