Hardly a week goes by now without news of another company announcing it will dissociate from a long-held brand that depicts or references racial caricatures or stereotypes. Even sophomoric attempts at humor like TRADER GIOTTO have tumbled in the face of public scrutiny.  Arrivederci! It’s as if in board rooms across America, executives have raised their gaze from balance sheets to look closely at the names and images on their ads and  wares. They have finally noticed what the public had been seeing for years: historical vestiges of “folksiness”, or worse, much worse, that were no longer viable in a multiracial, multicultural America.

That Indian maiden floating in a pastel haze on the LAND O LAKES butter tub? She’s no longer needed as the picture of radiant sunshine: evocation of nature alone will suffice.  UNCLE BEN with his savvy for all things rice, a man who has been serving it up since the 1940’s? He’ll be retiring, after having his look promoted in 2007 from that of a waiter to a business man. The Mars company, owner of the UNCLE BEN’S brand, said this is “now the right time to evolve the brand.” Evolve?

The Quaker Oats Company, the venerable brand which owns the AUNT JEMIMA trademarks, announced that it will be retiring the tireless homemaker as the face of its syrups and pancake goods. Despite an upgrade of her image a few years ago to pearl earrings and the look of a home economist, the history is too palpable for today’s consumers (and companies.) AUNT JEMIMA’s 19th century roots couldn’t be disguised with a wardrobe make over. Her warm smile and prizewinning pancakes will be missed, to be sure. But Quaker Oats, itself a subsidiary of Pepsico, a company whose portfolio is among the giants of American branding has decided the time is now to close the kitchen and put an end to a patronizing image.

Take that, Chief Wahoo!

In the world of professional and amateur sports, the Native American brands are having an expensive identity crisis. The owners of the Cleveland Indians released a statement saying the organization “is committed to engaging with our community and appropriate stakeholders to determine the best path forward with regard to our name.” (quoted in “Atlanta Braves not changing name, looking at “chop” celebration,” ESPN.com, July 12, 2020). In 2018, the owners of the Indians had announced plans to remove the toothy image of Chief Wahoo from team uniforms beginning with the 2019 season. Complaints about the Chief dated back many years. An effigy of his cartoonish face had been burned in protest as early as 1998, as recounted in Bellecourt v. City of Cleveland (104 Ohio St. 3d 439) (2004). The Ohio Supreme Court was faced with the question of whether the rights of people protesting the team’s use of Chief Wahoo and burning his effigy had been violated when they were arrested by Cleveland police and charged with aggravated arson. (In a 4-3 decision the court decided that there was justification for arrests, given the possibility of wind carrying embers from the burning effigy.) One dissenting judge found that adequate safety measures had been in place, there was no need for arrest, and that the burning was constitutionally protected speech. Moreover, he added: “If we allow flag burning in this country, we should certainly allow Chief Wahoo effigy burning. Our flag stands for over 200 years of freedom and unity; Chief Wahoo stands for 56 years (and counting) of baseball futility.”  Id., note 27. Take that, Chief Wahoo!

In a nod to the times, the Atlanta Braves management recently announced that they would initiate “review” of the appropriateness of the “tomahawk chop,” the frenzied wave of foam tomahawks by fans. They intimated that this could be a weighty decision, given that the “chop” inspires players on the field to perform.  Sports Illustrated reported that the team has removed the “Chop On” sign that graced the entrance to their ballpark. For the 2020 season, the slogan will no longer be “Chop On,” but rather “For The A.”  Amen!

The Braves have taken another path with respect to their team name.  They explained in a July 10 letter to season ticket holders that they would be not be changing their name. “We will always be the Atlanta Braves,” they wrote. Rather, they plan to continue and step up the consultations they have done with the Eastern Band of the Cherokees in North Carolina and add a new Native American Working Group to collaborate on issues.

The Washington Redskins have done the largest about face of all. For years, owner Pro Football, Inc. litigated to defend from cancellation several federal trademark registrations for REDSKINS that Native American plaintiffs argued were disparaging and offensive to a sizeable number of their peers. In 2016, the Supreme Court decision Matal v. Tam removed the statutory bar in Section 2(a) of the Lanham Act to registering disparaging or offensive marks on the grounds that such bar was a constitutionally impermissible restriction on speech. Following Tam, the cancellation proceedings against REDSKINS (which had been earlier affirmed by the Fourth Circuit) were dismissed by USPTO.  The team had “won” and retained its registrations.

Registration of the Washington Redskins mark in 1974

That was then

Today, trademark owners are reckoning with the origins and meaning of their brands. In the wake of the death of George Floyd at the hands of Minneapolis police officers and the ensuing protests against racial injustice, the voices and actions of citizens, consumers and corporate sponsors have been game changing.  FedEx, which owns the naming rights to the Redskins stadium under a reported $205 million deal that runs until 2025, urged the team management to change the name.  While the management considers its options, major merchandisers have removed Redskins memorabilia and items from their online stores.

The force and power of market backlash against offensive marks was foreseen in 2016 by a particularly perspicacious federal judge. Judge Kimberly A. Moore of the Federal Circuit Court of Appeals wrote the appellate opinion in In re Tam before the first panel of three judges that affirmed cancellation of the Redskins marks. That decision was vacated sua sponte by the Federal Circuit a short time later and the full appellate panel reconsidered the issues in light of this new question: Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment ? In re Tam, 785 F.3d 567 (Fed. Cir. 2015), The full panel decision addressing the constitutional issue found that the existing bar on registering disparaging and offensive marks could not stand. In re Tam, 808 F.3d 1321, (Fed. Cir. 2015). The Supreme Court affirmed.  Matal v. Tam, 137 S. Ct. 1744.

As recounted by Bloomberg News, Judge Moore observed in a panel at the International Trademark Association’s annual meeting in May 2016 that brand owners need to reckon with changing public standards. The right to make use of an offensive or disparaging mark to indicate the source of a good or service may be protected by the First Amendment, but it is not necessarily the way to win or retain customers, her remarks suggested.

We’ve Been Here Before

The current announcements about changes to long held brands have given rise to speculation in the legal press about whether interlopers will attempt to pick up where the suddenly “woke” corporations are leaving off. (As Racists Brands Fall, Will Some Try to Revive Them? Law 360, July 14, 2020) As of this writing, three different applicants have applied to register AUNT JEMIMA for goods related to pancakes or syrup.  Other applicants have rushed in to fill what they erroneously think is a trademark vacuum. An individual applied to register WASHINGTON REDSKINS for apparel and other memorabilia. Another individual submitted applications to the USPTO for marks that he believed the Redskins management was considering as alternatives to the current mark, such as REDHAWKS. He has reportedly offered to “give” the marks to the owners if they make charitable contributions to his liking.

Are such interlopers likely to be able to acquire rights in marks that teams or other companies have announced are no longer suitable to their corporate images or relationships with consumers? Yes, and no. One answer comes from a 1989 Second Circuit case that not coincidentally dealt with the doctrine of abandonment in the context of a racially charged mark: the famous Amos n Andy characters. (Characters may be marks if they serve a source-identifying function.) Silverman v. CBS, Inc., 870 F. 2d. 40 (2d Cir. 1989).  As recounted in the case, the fictional Amos ‘n’ Andy characters first appeared in radio episodes in 1928.  Their creators were two white radio actors and producers, Freeman F. Gosden and Charles J. Correll.  Gosden and Correll voiced the characters themselves, in some episodes playing multiple characters.  When the series transferred to television in 1951 under the CBS banner, Black actors were hired to play the roles, but the scripts remained the work of Gosden and Correll.  Throughout the years, the radio and TV shows attracted major sponsors: Pepsodent, Campbell‘s Soup and Blatz Brewing Company at some point were all commercial sponsors. The show also attracted negative attention: in the early 1950’s, the NAACP protested the television series as grossly distorting and demeaning. Id. CBS’s decision to cease producing new episodes was likely a result of this protest and changing attitudes about racial stereotypes in the media. The television series was aired on CBS affiliate stations until 1953 and continued in reruns and non-network syndication until 1966 when CBS withdrew it definitively.

The legal case arose when Silverman wrote a script in 1981 for a proposed Broadway musical based on the Amos ‘n’ Andy characters to be entitled “Amos ‘n’ Andy in Hollywood” or “Amos ‘n’ Andy Go to the Movies.” Silverman sought a license from CBS to use the characters and title for his musical, but the studio refused.  Silverman filed suit seeking a declaration that the radio programs were in the public domain and the content, including the characters and their names, were freely available for his use.  CBS countersued on copyright and trademark grounds asserting ownership of the copyright in the scripts for post-1948 radio shows, and infringement of CBS’s trademarks.  CBS asserted rights in “Amos ‘n’ Andy” as a mark (title) as well as the names of several other characters, including Kingfish, Lightnin’ and selected phrases such as “Holy Mackerel!” The trial judge first ruled that the names of the characters were protectable marks and set for trial the issue of whether CBS’s nonuse of the marks since 1966 constituted abandonment.  After a bench trial, Judge Goettel of the US District Court concluded that CBS had not abandoned its marks. Silverman v. CBS, 632 F. Supp 1344 (S.D.N.Y. 1986).

Silverman challenged the district court finding on abandonment and the Second Circuit agreed with him. The Court cited 15 U.S.C .§1127 (the definitions section of the Lanham Act at Section 45). “A mark shall be deemed to be “abandoned” (a) when its use has been discontinued with intent not to resume use.  Intent not to resume use may be inferred from circumstances. Nonuse for two consecutive years shall be prima facie abandonment.” (There was a second ground for abandonment that was not germane to the case.) The Circuit Court addressed CBS’s non-use of the marks and determined that CBS had not use the AMOS ‘N’ ANDY marks for 21 years prior to Silverman’s suit.

It then probed whether there was an intent on CBS’s part not to resume use. Under the law in effect at the time of the case, nonuse of a mark for two consecutive years was considered prima facie abandonment. (The current rule requires three years of nonuse.) It was undisputed that CBS had made a considered decision to take the television programs off the air in 1966. As noted above, this was in response to complaints by civil rights organizations like the NAACP that the programs were demeaning to Blacks.  CBS argued that, while it had no plans to use the marks in the foreseeable future, it intended to resume using them at some point in the future should the social climate become more hospitable.” (It strains the imagination to think that lawyers preparing these arguments in the late 1980s might think that the social climate would become more receptive to Amos ‘n’ Andy after the 1968 riots, the upheaval of the 1970s and the demographic shifts of the 1980s.) Silverman v. CBS, Inc., 870 F. 2d. 40 (2d Cir. 1989).

But the question before the court was not one of sociology, but of statutory interpretation. Does the phrase “intent not to resume use” mean never to resume use or does it merely mean intent not to resume use within the reasonably foreseeable future?

The Second Circuit concluded that the latter interpretation must be correct. Intent not to resume use may be inferred from circumstances, and two consecutive years of non-use constituted prima facie abandonment. A mark owner should not be able to assert that “at some point” it would resume use of its mark, should conditions change, after a verifiable period of non-use that satisfies the statutory definition.  (CBS’s nonuse  more than satisfied this test.) Id. This standard protects against the forfeiture of marks by owners who are temporarily unable to continue using them. Where blockades or boycotts have prevented use of valid marks, courts have seen fit to side with owners who justify more prolonged nonuse. (See, for example, the cases involving marks for rum and cigars used in Cuba before the revolution’s ouster of foreign companies.) But this lenient attitude does not justify mere warehousing of marks, which according to the court “impedes commerce and competition.”

Though CBS could not enforce its trademark rights to block Silverman’s intended musical, market forces carried the day. No such musical went forward.

Common Sense and Consumer Associations Rule in Trademark Law

Silverman holding should give pause to owners of the recently retracted marks who might like to save them for another time.  It is not a good strategy to try to “shelve” the marks and associated merchandise for a few years to see how the today’s social movements and issues settle out. If the marks are not used for the goods or services for which they are registered within the span of 3 years from the public announcements of changes (which indicate intent not to resume use in most cases discussed above), in all likelihood, the marks will be deemed abandoned by their owners and the registrations will be subject to cancellation. Nor will minor uses be enough to prolong trademark rights unless the uses are of a commercial nature.  Silverman teaches that attempts to maintain trademark rights by engaging in minor uses like educational programs or sporadic licensing for non-commercial (non-profit) uses, as CBS did over the years after the Amos ‘n’ Andy series was withdrawn from broadcast, will not be sufficient to forestall abandonment. Such minor uses do not sufficiently “rekindle the public’s identification of the marks with the proprietor, which is the essential condition for trademark protection, nor do they establish an intent to resume commercial use.”

This doesn’t necessarily mean that third parties will be able to establish rights in such marks either.  The current trademark registrations for sport team names or famous brands will not be cancelled until some action is taken after the period of abandonment has lapsed. Their presence on the trademark Register will impede current applications by opportunists. Doctrines of unfair competition will also work against using team names in association with team colors or other indicia of sponsorship. The public associations of the marks, colors and other indicia with the teams themselves (or with the producers of goods) will serve to keep them within the orbit of the original owners for some time to come.  Public memory (and associations) can be enduring.

Mark owners may derive some comfort from a case a case involving “zombie” marks, so called because they are presumed to have “died” but have been resurrected. by a third party. Macy’s Inc. and Macys.com Inc. were able to defeat attempts by Strategic Marks, LLC to register the names of defunct department stores that had been absorbed into the Macy’s corporate family and rebranded Macy’s.  Strategic Marks specialized in reviving “zombie” marks. With this strategy, it applied to register Filene’s, The Bon Marche, Bullocks, May Company, among many other former department store names later folded into the Macy’s corporate structure.  Macy’s Inc. v. Strategic Marks, LLC, 117 U.S.P.Q.2d 1743 (N.D. Cal. 2016).  Strategic Marks operated the Retro Department Stores online and sold T-shirts sporting these store names, presumably targeting  nostalgic shoppers who recalled bygone days of happy shopping.  Macy’s itself sold told shirts with names of what it called its “heritage marks” and had begun to register these same older store names as marks for apparel. Macy’s sued for trademark infringement. Strategic Marks defended on the grounds that the marks as used by Macy’s were merely ornamental, hence not acting to identify the source of the shirts, or that Macy’s use was not actually a use in commerce as required by the Lanham Act.

The opinion by Judge Chen is instructive.  Strategic Mark’s primary argument, he wrote, “is that because Macy’s no longer operates the regional brands, the marks have been abandoned and can now be used by any other individuals.” This is wrong, he admonished.  “Simply because a store has ceased operations does not mean that its proprietor or owner does not maintain a valid interest in the registered trademark of the business. A consumer may still be confused as to whether the owner of a mark authorized or licensed the use by a third party.” As to Strategic Marks’ argument about what constitutes adequate use in commerce, Judge Chen did not accept the test proposed by the defendant. Use in commerce is well understood in the law and Macy’s use of its heritage brands on t-shirts satisfied that requirement.

Caution

Brand owners who are in the process of “evolving” or changing marks now seen as offensive will have a bit of breathing room to make those changes before their federal rights lapse in the current versions. If there is any virtue in maintain these marks beyond the statutory period of abandonment, they will need to continue to make use in commerce of the marks in some form. Third parties who jump in to try to capitalize on the prior popularity of team names or other brands will likely find themselves unable to establish any viable use themselves, thereby dooming applications.  And they may also find themselves in litigation from trademark owners who view their actions as infringement or cybersquatting (if the registrations apply to domain names).  Perhaps most importantly, they will also find themselves in the unforgiving court of public opinion, where a penchant for offensive and disparaging marks for commercial advantage will be judged unfavorably by consumers. As it should be.

L Fishman

Lois R. Fishman is founder of the Law Office of Lois R. Fishman, a transactional law practice in Los Angeles, CA focusing on copyright, publishing, technology, entertainment, trademark and non-profit law. She was previously Assistant General Counsel with The Walt Disney Company handling…

Lois R. Fishman is founder of the Law Office of Lois R. Fishman, a transactional law practice in Los Angeles, CA focusing on copyright, publishing, technology, entertainment, trademark and non-profit law. She was previously Assistant General Counsel with The Walt Disney Company handling a variety of matters involving digital content. She graduated from Yale College and Georgetown University Law Center and currently teaches at Chapman University’s Fowler School of Law. She has familiarity with international intellectual policy matters as well as administrative proceedings before the Trademark Trial and Appeal Board, the Federal Trade Commission, and the Federal Communications Commission.