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NATIVE AMERICAN TRIBAL NAMES AS MONIKERS AND LOGOS: WILL THESE REGISTRATIONS WITHSTAND CANCELLATION UNDER LANHAM ACT § 2(b) AFTER THE TRADEMARK STUDY ON OFFICIAL INSIGNIA OF NATIVE AMERICAN TRIBES?
A. Historical Context
B. Registrable Subject Matter & Trademark Rights
C. Nonregistrable Subject Matter
A. Report on the “Official Insignia of Native American Tribes” (§ 2(b))
1. Legislative History: Trademark Law Treaty and the Zia Pueblo
2. Relevance of Study to § 2(b)
B. Native American Tribal Names v. Official Insignia Under § 2(b)
1. Are Tribal Names “Insignia” Within the Meaning of § 2(b)?
a. Current Definition of “Insignia” Under § 2(b)
b. Proposed Definition of “Official Insignia” of Native Americans
2. Would §2(b) be Revised to Include Tribal Names as “Insignia”?
3. Would a § 2(b) Revision Apply Retrospectively to Cancel Registered Tribal Names?
a. The Defense Issue
C. The Viability of Codifying the Study Results
Throughout this past decade,
challengers to registered trademarks[1]
bearing the name “Redskins” have echoed many activists’ related concerns that
registrations of Native American tribal names[2]
as monikers and logos[3]
perpetuate a racist stereotype of Native Americans as savages and as are
remnants of a bygone era.[4] Yet, many proponents of registered tribal
names counter that the name and symbol are meant to be a mark of respect for
Native peoples, signifying appreciation of their history and culture.[5] Whether tribal names should be granted
protection under the trademark laws, particularly for use by non-Native
Americans,[6]
is an issue that remains to be answered after the cancellation of the
“Redskins” marks in Harjo v. Pro
Football, Inc.[7]
and the trademark study on the “Official
Insignia of Native American Tribes” (the “Study”).[8]
The debate continues over trademark
registrations on non-tribal name moniker and logo references[9]
to Native Americans, such as “Redskins,”[10]
particularly in athletics.[11] In light of the opposition to the “Redskins”
marks, it appears plausible that opponents to the use of tribal names may
challenge marks bearing Native American tribal names (i.e. the “Seminoles” of
Florida State University, the “Fighting Illini” of the University of Illinois,
or the “Fighting Sioux” of the University of North Dakota).[12] Seemingly advocating such an opposition, one
scholar declared that “[c]urrently non-Native American people and companies use
Native American names and symbols as trademarks . . . [and] [o]ften these uses
are disparaging or offensive to Native Americans, and continue to perpetuate
the stereotype that Native Americans are inferior and dying peoples.”[13]
However, unlike the disparagement suit in Harjo under Lanham Act § 2(a), the
following discussion is devoted to analyzing the trademark registration issues
raised on registered tribal names solely in the context of Lanham Act § 2(b).[14] In particular, this article discusses whether
tribal names would remain registered in light of the Commissioner’s
recommendations based on the results of the Study.
Section II is devoted to providing an overview of trademark law relevant to the issues addressed. This Section serves equally to reference the applicable bodies of trademark law directly on point or related to the issues presented and analyzed on registered tribal names under section 2(b). Section III then analyzes the general issue of whether registered tribal names would constitute official tribal insignia, and thereafter be nonregistrable as trademarks, if Lanham Act § 2(b) were retrospectively revised to include tribal names as “insignia”, based on the results of the Study.[15]
Based on the importance of the Study to the second
general issue, a review of the legislative history and issues of the Study is
covered initially.[16] Following a general overview, the relevance
of the Study to Lanham Act § 2(b) is explained.[17] Thereafter, the viability of tribal names as
“insignia” under section 2(b) is analyzed in light of the recommendations and
results from the Study.[18] Based on the Study, three specific questions
are raised to address the general issue concerning a potential revision to
section § 2(b):
1) Are tribal names “insignia”
within section 2(b)?;
2) Would section 2(b) be
revised to include tribal names as “insignia”?; and
3) Would a section 2(b)
revision apply retroactively to cancel registered tribal names?[19]
Preliminarily, a few qualifications must be noted to
distinguish the Harjo case from the
separate issues addressed by the Study in the context of tribal names.[20] First, the term 'Redskins’ is not the name of
a Native American or Native American tribe[21]
but rather a non-tribal name that may bear reference to Native Americans,
generally. Therefore, the issues raised
against the term “Redskins” in Harjo,
cannot be seen as analogous to similar issues against actual Native American
Tribal names. Additionally, the Study
was just that: a non-binding study seeking to find answers to trademark issues
on protecting the “Official Insignia of Native American Tribes.”[22] Furthermore, in distinguishing the “Redskins”
case (which deals with bars to registration under section 2(a)) from the Study
on official tribal insignia (which deals with bars to registration under
section 2(b)), the Study also made clear that neither the term “Redskins” nor
the logos associated with the term are emblems associated with or claimed by
any Native American Tribe.[23] The issues in the Harjo decision are outside of section 2(b), [24]
which although bearing trademark
implications, do not involve official
insignia of Native American tribes. Thus, although overlapping matters exist,
the Trademark Commissioner emphasized that even though Harjo involves both trademarks and a reference to Native Americans,
it is outside the issues under review
in the Study.[25]
Notwithstanding these caveats, the judicial decision
in Harjo only amplifies the issue of
whether the findings of the Study provide any answers to the unresolved issues
surrounding trademark rights in tribal names versus tribal insignia.[26] Following the analysis in Sections III,
Section IV concludes the analysis of whether Lanham Act § 2(b), against the
backdrop of the Study, provides any concrete direction to the issues
surrounding trademark rights in Native American tribal names as monikers and
logos.[27]
This Section presents an overview of specific trademark
provisions. Primarily this coverage
yields to the trademark novice[28]
a better understanding of the intellectual property rights relevant to the
trademark issues discussed on tribal names (i.e. “Seminoles”, “Illini”,
“Sioux”). As one opposing author noted,
registrations on tribal names are far from limited; with as many or more than
94 on the name ”Cherokee,“ 35 on the name ”Navajo,“ and 208 referring to the
Sioux.”[29]
Initially, this analysis works from the ground up, by
presenting a brief introduction to the legal concepts and provisions relevant
to understanding how the trademark owners of Native American tribal names
originally attained protection through the Lanham Act .[30] This paves the road for a better
understanding of how trademark protection may be stripped. This Section also provides an overview of the
interplay between the cancellation provisions in Lanham Act §§ 2(a) and 2(b) to
better frame the potential for opposition against registered Native American
tribal names.[31]
In terms of trademark registrations, the distinctions
between marks registered under five years and those registered beyond five
years (labeled "incontestable") are examined.[32] Finally, the dichotomy between Lanham Act §§
2(a) and 2(b) is explored.[33]
A. Historical Context
Trademarks, like copyrights,
patents, and trade secrets, fall within the class of property known as
intellectual property. Although these
other forms of intellectual property are aimed at protecting inventions and
expressions from infringement and theft, trademark law is directed to
protecting the consumer.[34] In summary:
Trademarks are traditionally viewed as a source
identifier. They are words and designs whose purpose is to distinguish the
goods or services of one company from the goods or services of another company.
The underlying premise in the treatment of trademarks as a source identifier
rests on the assumption that consumers read these identifiers as representing
consistency between goods bearing the same identifier - that different goods
bearing the same trademark emanate from the same source, and that trademarks
represent the promise of consistent quality.[35]
The law of trademarks[36]
has existed largely to promote the goodwill[37]
associated with goods in societies’ competitive markets. This promotion of goodwill, as evidenced by
adherence to proper trademark registration, is a primary concern to trademark
owners of such registered marks as the “Redskins” and tribal names such as the
“Seminoles,” “Illini,” and “Sioux.”[38] A recent Supreme Court case noted that:
[I]n 1878, this Court described the common-law definition of trademark rather broadly to “consist of a name, symbol, figure, letter, form, or device, if adopted and used by a manufacturer or merchant in order to designate the goods he manufactures or sells to distinguish the same from those manufactured or sold by another.”[39]
Thus, for a mark to be
registered on the principal register, it must be used in commerce[40]
to distinguish the products of one owner from those of another.[41]
B. Registrable Subject Matter & Trademark Rights
Presently the Lanham Act
governs the law concerning trademarks.[42] A party seeking to register a trademark must
file an application for registration with the Patent and Trademark Office
(“PTO”), which then determines whether the mark is registrable.[43] Lanham Act § 2 contains the grounds upon
which an application may be refused registration, and specifically lists those
symbols, words and other matter that are not considered registrable subject
matter.[44] However, if the PTO determines that the
subject matter is registrable , the mark is then published in the PTO’s Official Gazette.[45]
Where no opposition proceeding, or challenge to the
registration of the mark, is initiated,[46]
the mark may then be registered on the principal register.[47] If registered, the registrant is issued a
certificate of registration[48]
on the mark upon the principal register, which signifies:
[P]rima facie evidence of
the validity of the registered mark and of the registration of the mark, of the
registrant’s ownership of the mark, and of the registrant’s exclusive right to
use the registered mark in commerce on or in connection with the goods and services
specified in the certificate subject to any conditions or limitations stated in
the certificate.[49]
However, a trademark which has been registered for less than five years may be cancelled on any grounds for which the mark would have been denied registration originally.[50]
Following five years of registration, section 15 of the Lanham Act provides that an owner of a federally registered trademark may acquire incontestable status by filing an affidavit with the Commissioner of the PTO.[51] Upon acceptance, these marks are granted a heightened status.[52] This heightened status, incontestability, allows a registrant to quiet title in the ownership of his mark. [53] However, as was evidenced by the Trademark Trial and Appeal Board (the “Board”) in Harjo, merely because a trademark advances to incontestable status does not mean that property rights will arise where no rights existed at the outset.[54]
C. Nonregistrable Subject Matter
After the October 1998 Lanham Act
revisions,[55]
there now expressly exist eight grounds for cancellation of marks[56]
and nine defenses to infringement of marks[57]
at any time, whether incontestable or not.[58] Pursuant to the cancellation provision
applied against the “Redskins” marks, and the possible relevance to registered tribal
names, section 14 of the Lanham Act provides that a cancellation proceeding may
be asserted at any time, regardless of whether the mark has achieved
incontestable status, if the registered
mark “was obtained … contrary to …
subsection (a), (b), or (c) of section 1052 (those comprising immoral,
deceptive, or scandalous matter, or . . . disparaging . . . or those consisting
of the flag or coat of arms or other insignia of any nation) . . .”[59] Section 2(b) provides that no trademarks
shall be registrable on the principle register that consists of or comprises
the flag or coat of arms or other insignia of the United States, or of any
State or municipality, or of any foreign nation, or any simulation thereof.[60] Primarily, sections 2(b) and 2(a) differ regarding
national symbols, in that section 2(b) requires no additional finding, such as
disparagement or a false suggestion of a connection, to preclude registration.[61]
For a greater appreciation of the deep-seated issues
confronting those deciding matters in Harjo
and the Study, it is worth noting, as one author has expounded on, the struggle
within Native American tribes surrounding trademarks generally:
[I]t is also important to recognize that there is
not necessarily agreement between the tribes or even within tribes regarding
others' use of their symbols. For
example, some Native Americans desire their symbols to be reserved for their
tribe and therefore want intellectual property laws to prevent others from using
or incorporating the symbols in any way.
Meanwhile, other Native Americans want to be compensated for others' use
of their symbols, thereby enhancing their economic stature. Still other Native Americans "seek to
use . . . intellectual property laws in an effort to control and restrict the
flow of images, thereby securing the meaning of their art," culture, and
identity. In particular this last group wants "to be able to deny certain
uses of their art [and symbols], especially those that would amount to
spiritual violations." Interestingly, this is exactly what section
302 seems to address and seeks to ensure[62]
This same author expressed that rather than making official tribal insignia nonregisterable, Native Americans should seek to be the first to register their own symbols and insignia to prevent others from using the mark.[63] Yet, such a remedy would overlook the inherent inadequaties of current trademark law to protect tribal symbols and insignia for the following reasons:
1) different Native Americans
and their tribes may hold the same symbol as an official insignia or sacred
symbol of their group. Therefore, if one person or tribe registers the symbol
as a trademark, then all other groups would be prevented from using the symbol,
at least in the same manner;
2) it is unclear who speaks for
the various Native American people and their tribes; each tribe may have
conflicts within it that would prevent a common view regarding the designation
of one or more official insignia;
3) Native Americans may believe
that an official insignia will lose its qualities and meanings if it becomes a
registered trademark, or adopted and used by people outside of the tribe;
4) many Native American tribes
live at poverty levels and might not be able to effectively litigate to protect
use of their marks or even be familiar enough with trademark law to challenge
others' trademarks;
5) even once someone registers
a trademark, that mark can still be used by others, albeit in a limited way,
thus not precluding outsiders' use of the mark;
6) Native American tribes are
communal organizations. They believe
that their property belongs to the group and not to an individual, as trademark
law presumes. Therefore, there is a concern as to whom the trademark registration
would be registered and how the trademark would remain a group right; and
7) in order for a trademark to
be valid, the mark must be used commercially in interstate commerce and must
serve to distinguish one's goods or services.[64]
This Article does not attempt to further analyze each of these separate but related concerns surrounding Native Americans generally but raises them here only to further indicate the complexities beyond even the issues discussed.
III. NATIVE
AMERICAN TRIBAL NAMES v. LANHAM ACT § 2(b)
A. Report on the “Official Insignia of
Native American Tribes” (§ 2(b))
This past year the Study raised issues on whether registered Native American tribal names could be cancelled under section 2(b).[65] Specifically, the Study discussed whether such names would be included among the other section 2(b) “insignia,” barred from trademark registration. As will be discussed in further detail:
Included
as part of the definition of insignia are emblems of national authorities such
as the Great Seal of the United States, the Presidential Seal, and seals of the
government departments, that is, those emblems and devices which represent
governmental authority of the same general class as flags and coats of
arms. A proposed mark is barred under
this section which consists solely of such symbol or has such symbol
incorporated in the proposed mark.[66]
The Study revealed that many of the respondents to the Study argued that Native American tribal names, such as “Seminoles,” “Illini,” and “Sioux,” should constitute “insignia” under section 2(b) and, therefore, be ineligible for trademark registration.[67]
Before the Study results were released, one legal
analyst argued that section 302 of the Study should be enacted to amend section
2(b) of the Lanham Act to include official tribal insignia.[68] Further, it was asserted that such an
amendment be implemented retrospectively to effectively bar any and all
official tribal insignia from being registered as trademarks, thereby giving
tribes the only rights to such insignia and symbols.[69] With the Study results now released, this
Article attempts to objectively analyze whether these results would provide for
such measures.
In light of the comments from respondents to the Study, the question is whether registered Native American tribal names could constitute “insignia” under Lanham Act § 2(b).[70] The following discussion concerns the viability of a cancellation proceeding under section 2(b) against tribal names by raising and analyzing three specific issues to address this question:
1) Whether tribal names are “insignia” within the meaning of section 2(b);
2) Whether section 2(b) would be revised to include tribal names; and finally
3) Whether section 2(b), if revised, would apply retroactively to cancel registered tribal names.[71]
In addressing the three specific issues raised under
section 2(b) against registered tribal names, the Study will serve as the
backdrop for the analysis.[72] The results from two of the most relevant
questions researched by the Study help to provide answers to the questions
raised above, namely, determining an acceptable definition of the term
“official insignia” with respect to a federally or State recognized Native
American tribe anda determination of whether such protection should be offered
prospectively or retrospectively and the impact of such protection.[73] First, however, a brief review of the
legislative history leading up to the Study
is provided.
1. Legislative
History: Trademark Law Treaty and the
Zia Pueblo
The Study arose as part of the Trademark Law Treaty
Implementation Act (the “TLT Act”), which was enacted in 1998 and effective in
1999.[74] The underlying mission of the TLT Act
provisions was to bring greater conformity between United States trademark law
and analogous law throughout the world.[75] As part of the TLT Act, section 302 also
required the Commissioner of Trademarks to study the issues relevant to the
protection of the official insignia of Native American tribes.[76]
The legislation for the Study was submitted by New
Mexico Senator Jeffrey Bingamen.[77] Following continued pressure from his
constituents, the Zia Pueblo, with regard to their sun symbol, Senator
Bingamen’s recommendation proposed the Study to research means of protection
for insignia bearing significance as religious symbols.[78] Specifically, the Zia Pueblo argued that the
sun symbol, evidenced on New Mexico's state flag and other goods and services
throughout the state, is a sacred symbol
that belongs to the Pueblo tribe and should not be trademarked by others. [79]
Therefore, the Study was undertaken to analyze
whether current United States trademark law should be amended to prevent the
registeration of official Native American insignia. [80] Pursuant to this mission, the Commissioner of
Trademarks was required to study how the official insignia of Native American
tribes could be better protected under trademark law.[81] Of the questions posed by the Study,
initially this article is directed to determining an acceptable definition of
the term "official insignia" with regard to Native American
tribes. Then, the focus shifts to
whether protection should be offered, and if so, whether prospectively or
retrospectively.
2. Relevance of Study to § 2(b)
Pursuant to the Study, if any changes were made to
the Lanham Act, such revisions
would
most likely occur within section 2(b) of the Lanham Act, which prevents
trademark registration of “insignia.”[82] As noted, section 2(b) was raised by several
participants, including Native American tribes, as the appropriate means for
protecting the “official insignia” of Native American tribes, including tribal
names.[83]
However, seeking protection under
section 2(b) could place Native American tribes in a worse position than they
currently occupy, since this would also prohibit tribes from obtaining federal
trademark registration for their insignia.[84] Presently, any party, including Native
American tribes, may seek trademark registration of Native American tribal
insignia (assuming no other provisions of the Lanham Act prevent such
registration), which may or may not include a Native American tribe’s
respective name.[85]
B. Tribal
Names v. Official Insignia Under § 2(b)
1.
Are Tribal
Names “Insignia” Within the Meaning of § 2(b)?
a.
Current Definition of “Insignia” Under § 2(b)
Initially, the analysis must turn on how “insignia”
is presently defined.[86] Section 2(b) of the Lanham Act defines
“insignia” as that which “consists of or comprises the flag or coat of arms or other
insignia of the United States, or of any State or municipality, or of any
foreign nation,[87]
or any simulation thereof.”[88] Yet, as the Study noted, Native American
tribes do not constitute foreign nations, States or municipalities.[89] Rather, tribes occupy the unique status of
domestic dependent nations, falling within the protection of the United States.[90] Thus, under current law, the PTO does not
specifically make trademark registration refusals under section 2(b) with
respect to “official insignia” of Native American tribes.[91] However, based on the findings of the Study,
the question is whether Native American tribal names would constitute
“insignia” if section 2(b) of the Lanham Act were revised.[92]
The Study defined that under
section 2(b), “flags and coats of arms are specific designs formally adopted to
serve as emblems of governmental
authority.”[93]
(emphasis added). The Study further clarified that the “wording ‘other insignia’ is not interpreted broadly, but is
considered to include only those emblems and devices which also represent
governmental authority and which are of the same general class and character as
flags and coats of arms.”[94]
(emphasis added). Presently, since tribal insignia is not expressly noted
within section 2(b), it would essentially have to fit the meaning of “other
insignia” to constitute insignia within the meaning of section 2(b).[95]
Numerous cases have decided issues surrounding what constitutes
insignia under section 2(b). In 1964,
the Board construed the statutory language as follows:
[T]he wording “or other insignia of the United States” must be restricted in its application to insignia of the same general class as “the flag or coats of arms” of the United States. Since both the flag and coat of arms are emblems of national authority is seems evident that other insignia of national authority such as the Great Seal of the United States, the Presidential Seal, and seals of Governmental departments would be equally prohibited registration under Section 2(b). On the other hand, it appears equally evident that departmental insignia which are merely used to identify a service or facility of the Government are not insignia of national authority and that they therefore do not fall within the general prohibitions of this section of the Statute.[96]
Furthermore,
the Board later explained that:
[L]etters which merely identify
people and things associated with a particular agency or Department of the
United States Government, instead of representing the authority of the
Government or the Nation as a whole are not, generally speaking, ‘insignia.’[97]
(emphasis added).
Additionally, many respondents to the Study
indicated that official insignia should “include words alone, particularly Tribal names (e.g. “Cheyenne” or
“Lakota”), as well as words in combinations with figurative elements.”[98]
(emphasis added). Countering this, the Study also included relevant arguments
by several trademark owners and trade groups as to what should constitute
official insignia.[99] Specifically:
No trademark owner thought that cancellation of
existing registrations, or the possibility of providing a new statutory basis
for cancellation of such registrations, was a useful course of action. Further, many trademark owners strongly
indicated that such change could be viewed as an unconstitutional taking of
private property. Most of the trademark
owners indicated that the current system of trademark protection is quite
acceptable. The trademark owners uniformly maintained
that the definition of “official insignia” should not encompass individual
words, particularly the names of Native American Tribes.[100]
(emphasis added).
In
particular, the last comment by the trademark owners/groups above countered
that tribal names not be included in the
definition of “official insignia”, as such a revision to include tribal names
may greatly affect that which could remain or later be registered.[101]
The Study seemed in accord with the trademark
owners/groups, stating that, consistent with current practice under section
2(b), words alone would not be considered official insignia of Native American
tribes.[102] “For example, the word ’France’ is not
considered ’insignia’ of France under Section 2(b), so that inclusion of the
word ’France’ in a trademark does not violate this section of the Trademark
Act.”[103] Thus, even if specific tribal names could be
incorporated as part of a tribe’s “official insignia,” it appears under current
practice that others could still seek trademark registration of the tribal name
alone.[104] However, the emblem or flag of tribal
governmental authority, which may incorporate a tribal name, could not be
registered.[105]
As noted earlier, some have argued against
non-Native Americans having trademark rights in tribal names. Furthermore, even if such a name was included
as part of a tribe’s “official insignia.” “some commentators indicated that
there was no possibility of ’good faith’ use of tribal names, except by Native
Americans.”[106] However, the Study did note that some tribal
names have acquired meanings beyond names of tribes.[107] In fact, many words which identify tribes are
also incorporated in trademarks throughout the world to identify geographic
places.[108] Yet, where the registered tribal name in
question does not have meanings in other languages, the issue of false
association and disparagement under section 2(a) is created in the eyes of
some.[109] Countering from a public policy approach, the
Study resounded that:
A per se
prohibition on registration of the names of Native American tribes could create
gross unfairness to trademark owners using names that happen to intersect with those of Native American
tribes. These entities have no intention
of falsely associating themselves
with Native American tribes and are in no way actually associated with Native
American tribes in the mind of the consuming public.[110]
(emphasis added).
Following an analysis of the applicable case law and
trademark registrations, the Study sought to interpret a workable definition of
the term “insignia.” The Study generally
clarified that “insignia,” under section 2(b):
[I]s restricted to flags, coats of arms, or designs
(which may include words) formally
adopted to serve as emblems of governmental authority, and to those emblems and
devices which also represent governmental authority (even if not formally adopted) and which are of the same general
class and character as flags and coats of arms.[111]
(emphasis added).