The Legal Case for Challenging Chief Wahoo by Nathaniel Grow October 18, 2016 If Canadian indigenous-rights activist Douglas Cardinal had had his way, the Cleveland Indians would have been legally prohibited from playing Games 3 through 5 of the American League Championship Series in their standard road uniforms. According to a lawsuit filed by Cardinal on Friday in Ontario Superior Court, both Cleveland’s Chief Wahoo mascot as well as the “Indians” team name itself are racially offensive and discriminatory, in violation of Canada’s Human Rights Act (which generally prohibits businesses from “differentiat[ing] adversely” between citizens on the basis of race, gender, religion, or sexual orientation). Although Judge Thomas McEwen announced on Monday afternoon that he would not be issuing an injunction blocking Cleveland from wearing its normal uniforms during the ALCS, the legal proceedings have nevertheless brought renewed attention to Cleveland’s use of what are, in the minds of many, racially insensitive team insignias. This raises the question of whether Cleveland’s — or, for that matter, the Atlanta Braves’ — team name or logos are at risk of being successfully contested in the United States. Indeed, considering that a U.S. federal court ruled last year that several trademarks belonging to the National Football League’s Washington Redskins must be cancelled due to their disparaging nature, it is entirely possible — and perhaps even probable — that Cleveland or Atlanta could soon face a trademark challenge of its own in U.S. federal court. Any U.S. legal challenge to Cleveland’s or Atlanta’s team name or logos would likely be premised on Section 1052 of the Trademark Act, a provision prohibiting trademarks that “disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” In the Washington Redskins case, for example, a group of Native Americans alleged that the team’s trademarks should be cancelled under this provision because the term “redskin” has long been considered a Native-American slur. In applying the statutory provision to Washington’s trademarks, the court examined whether a substantial number of Native Americans considered the trademarks to be disparaging at the time they were originally registered. In other words, the question is not whether someone might find the trademarks to be offensive today, but whether a critical mass of Native Americans felt they were offensive at the time when the government first approved them. Moreover, under Section 1052, courts do not decide whether the use of the term in question is generally considered offensive, but rather ask whether it is disparaging in the particular context with which it has been trademarked. In other words, even if the term “Indians” may not be considered disparaging in and of itself, if Native Americans were offended by its use as the name of a sports team, then it could potentially be subject to cancellation. In the Washington case, the court ultimately determined that the team’s name was disparaging to Native Americans at the time its trademarks were first registered back in the 1960s. In particular, the court emphasized the fact that Native American groups had been protesting the team’s use of the term since its registration, and that dictionaries began labeling the term as being offensive around the same time. Anyone wishing to challenge any of the Cleveland Indians’ or Atlanta Braves’ trademarks would likely have to make a similar legal showing. In Cleveland’s case, the team formally registered the “Indians” name and its “Chief Wahoo” logo in 1984 and 1976, respectively (although both insignias had, of course, been in use for quite some time before then). Thus, in order for either trademark to be cancelled, a challenger would have to show that a substantial number of Native Americans considered them to be disparaging prior to their date of registration. In fact, it turns out that a Native American group had filed a lawsuit against the team back in 1972, claiming that both the “Indians” name and Chief Wahoo logo were racist and offensive. Should another group decide to challenge Cleveland’s trademarks, this earlier lawsuit would provide strong evidence that the name and logo were both considered offensive to Native Americans well before the government formally approved them for trademark protection. As with the Washington football team, then, Cleveland is potentially at risk of losing its federal registration of these trademarks. Meanwhile, Atlanta first registered trademarks for the term “Braves,” as well as its “Screaming Indian” logo, back in 1967. (It does not appear that either the Boston or Milwaukee Braves had sought out federal trademark protection prior to the franchise’s relocation to Atlanta.) Unlike with Cleveland, however, it does not appear that any Native American group had formally protested Atlanta’s team name or logo in court before the government approved those trademarks. Nevertheless, in the Washington case, the court relied on evidence that Native American groups had met privately with the football team to express their displeasure with the team name before or around the time that its trademarks were registered. It is possible that someone intent on challenging Atlanta’s trademarks could uncover a record of similar communications with the Braves. Along these lines, news reports suggest that the Native American group that filed the lawsuit against Cleveland in the 1970s had planned to file a similar challenge against Atlanta around the same time period, expressing particular displeasure with the team’s “Chief Noc-a-Homa” mascot. That all having been said, the constitutionality of Section 1052 — the statutory provision on which these challenges would likely be based — is currently being reviewed by the U.S. Supreme Court in a case involving the Asian-American rock band The Slants. If the Supreme Court were to rule in the band’s favor, then trademarks along the lines of Cleveland’s or Atlanta’s may no longer be subject to cancellation on disparagement grounds. But let’s assume that Section 1052 is ultimately upheld as constitutional, and that either Cleveland’s or Atlanta’s trademarks are successfully challenged under the provision. In that case, what would be the implications of a court cancelling some, or all, of the team’s trademarks? Less than one might think. For starters, the loss of federal trademark protection does not mean that the team would necessarily be forced to change its name. The cancellation of a trademark doesn’t compel a business to stop using the mark in question; it just prevents the company from suing infringers for the unauthorized use of its marks under federal law. Even then, however, because many trademarks are also protected under state law, as well, the teams would likely still be able to sue any infringers for violating this state-level protection. That isn’t to suggest that federal trademark protection is meaningless. Having a federal trademark gives you a presumption of ownership over that trademark, and in some cases allows you to recover greater damages from infringers. But on the whole, the loss of federal trademark protection is less significant than is commonly assumed. Nevertheless, losing federal trademark protection would certainly be a significant symbolic and public-relations defeat for Atlanta or Cleveland. As a result, given the controversial nature of their team names and logos, it would not be surprising if both franchises eventually face their own trademark challenges in the not-too-distant future.