UNITED STATES OF AMERICA
PATENT AND TRADEMARK OFFICE
PUBLIC HEARING REGARDING ISSUES SURROUNDING
TRADEMARK PROTECTIONS FOR THE
OFFICIAL INSIGNIA OF FEDERALLY AND/OR STATE
RECOGNIZED NATIVE AMERICAN TRIBES
Commissioner's Conference Room
Room 912
2121 Crystal Drive
Arlington, Virginia 22202
Thursday, July 15, 1999
The hearing convened, pursuant to notice,
at 9:05 a.m.
PANEL MEMBERS:
SHARON MARSH, Administrator for Trademark
Policy & Procedure
DEBBIE COHN, Senior Trademark Administrator
ELEANOR MELTZER, Staff Attorney, Office of
Legislative and International Affairs
Q. TODD DICKINSON, Acting Secretary of
Commerce, Acting Commissioner of Patents
and Trademarks
A G E N D A
SCHEDULE SPEAKER PAGE
1. Sharon Marsh, Administrator for
Trademark Policy and Procedure....... 3
2. Nikki Daruwala, Social Research
Analyst, Calvert Group, Bethesda,
Maryland............................. 7
3. Mamie Rupnicki, Tribal Chairwoman,
Prairie Band Potawatomi Nation....... 11
4. Melody L. McCoy, Staff Attorney,
Native American Rights Fund.......... 23
5. William Lockard, Attorney, O'Donnell &
Schaefer, Los Angeles................ 34
6. Ambassador Charles W. Blackwell, The
Chickasaw Nation..................... 52
7. Professor Ellen J. Staurowsky, Ithaca
College, Ithaca, New York............ 60
8. Michael D. Hobbs, Jr., Attorney for
Mohawk Carpet Corporation, Troutman
Sanders, LLP......................... 79
9. Gary Brouse, Interfaith Center on
Corporate Responsibility............. 102
10. Michael Haine, Director, National
Coalition on Racism in Sports and
Media................................ 118
11. Thomas Brooks, Gadsby and Hannah, for
the International Trademark
Association (INTA)................... 135
12. Robert Goff.......................... 148
13. E. Leonard Rubin, The University of
Illinois, Gordon & Glickson, LLC..... 162
P R O C E E D I N G S
1. SHARON MARSH
MS. MARSH: I think it's about nine, and we'll go
ahead and get started.
Good morning, all. I am the Administrator for
Trademark Policy and Procedure. To my left is Debbie Cohn
who is an Administrator for Trademark Operations, and to my
right is Eleanor Meltzer who is a staff attorney in our
Office of Legislative and International Affairs and has put
in an enormous amount of work to put this event together
this morning, and we're really grateful for her efforts.
On behalf of both the Department of Commerce and
the U.S. Patent and Trademark Office, we would like to
welcome you this morning and thank you very much for your
interest in today's hearing. As you may already know, due
to the efforts of Senator Bingaman who is one of the
senators representing the State of New Mexico, Congress last
fall passed a law which requires the Patent and Trademark
Office to study a variety of issues surrounding the
trademark protection for the official insignia of federally
and/or state recognized Native American tribes, and at the
end of September, we will submit a report to Congress on our
findings.
We have solicited public comments by publishing
two notices in the Federal Register, one on December 29,
1998, the other on March 16, 1999, and we received quite a
few responses to both of those notices; however our acting
commissioner, Todd Dickinson, as well as our staff, thought
it was important to also hold public hearings on this issue.
The hearing today is the third and final public
hearing in a series that began last week in Albuquerque, New
Mexico and continued in San Francisco. We received a great
deal of useful information at those hearings and look
forward to your comments today. We are here to listen and
to learn from you about the issues involved in trademark
protection for the official insignia of Native American
tribes.
Before we get started, though, I wanted to take
just a minute or two to tell you a little about what we're
doing at the PTO currently to safeguard the intellectual
property rights of Native Americans. The PTO is not a law
enforcement agency like the FBI or U.S. Customs. So we
don't send out the trademark police if a wrongdoer infringes
someone else's trademark. Instead, we have the more limited
role of examining and registering trademarks, as well as
examining and granting patents, but our trademark act has a
particular provision in it that explicitly prohibits
registration of marks that might be disparaging or that
might subject a false association between the applicant and
the person, group, or thing identified in the mark.
As a result, the office does refuse to register
many marks incorporating the names or symbols of Native
American tribes. Since, I think, about 1994, all trademark
applications that contain the name of tribes, recognizable
likenesses of Native Americans, symbols perceived as being
Native American in origin, and any other application which
the office believes suggests an association with Native
Americans are examined by one examining attorney who has
become an expert in this area.
We also have several other systems in place to
safeguard against the wrong party obtaining trademark rights
on something to which they're not entitled. We have
something called the letter of protest procedure where a
third party, if during the examination of an application
they can submit evidence to show that the term or the symbol
is unregisterable, we also have an opposition and
cancellation procedure. All of those things help to ensure
that trademark registrations are issued in accordance with
the trademark act.
So that was, in a nutshell, an overview of the
role of the PTO in protecting the intellectual property
rights of Native Americans. Before we get started, I'm
going to turn the floor over to Eleanor who has few
housekeeping items.
MS. MELTZER: Oh, Sharon, thank you very much, and
thank you all for being here this morning and for your
patience in corresponding with the office.
We've scheduled everybody for 15 minutes, and,
please, I will let you know when you're about 10 minutes
into your testimony. I'll let you know when you have about
five minutes left. When you come up to the table, could we
ask you to state your name and your affiliation for the
record so that our court reporter, Cathy Crump, can capture
all that information for the record. And if there's any
time left after all the scheduled people have testified, if
anyone has additional remarks or would like to speak from
the floor, then we'll take comments at that time.
Thank you very much, Sharon.
MS. MARSH: Our first speaker is Nikki Daruwala
who should come forward and take the floor. Nikki is a
social research analyst with the Calvert Group in Bethesda,
Maryland.
2. NIKKI DARUWALA
MS. DARUWALA: Thank you. Hello. Good morning.
My name is Nikki Daruwala, and I represent the Calvert
Group, a leading socially responsible investment firm
located in Bethesda, Maryland. Calvert's socially
responsible investment practices are based on the belief
that caring for our natural environment and recognizing the
importance of human dignity are essential to the long-term
health and well-being of our increasingly interdependent
world.
We express our thanks to the commission and the
staff of the U.S. Patent and Trademark Office for this
opportunity to provide our comments in response to the
statutorily required study of Public Law 105.330 surrounding
trademark protection for the official insignia of federally
and/or state recognized native American tribes. We would
like to address the Issue No. 4 as stated in the Federal
Register notice June 3, 1999.
It is our understanding that the Patent and
Trademark Office does not currently protect Native American
tribal insignia including names and logos. It is our belief
that this lack of legal protection has resulted in
tremendous harm to the Native American community and to
American society as a whole. The manipulation and blatant
misuse of Native American imagery is visible on a daily
basis within our society. These includes the use of Crazy
Horse label apparel, the Washington Redskins football team,
and the Indians and Chief Wahoo of the Cleveland baseball
franchises.
These logos and the negative images associated
with their use are marketing ploys used by corporations and
sporting industry to promote and sustain racism within
society. Contrary to corporate and industry belief, these
images in no way promote or honor the Indian community.
Calvert Group supports the notion of positive portrayals of
all individuals and ethnic groups, furthermore, actively
supports the rights of Native Americans to influence and
control traditional, cultural and religious symbols.
We object to the use of mascots, logos, symbols,
and other tribal insignia that portray Native Americans in a
negative light and promote racism and bigotry within our
society. Despite repeated public opposition by numerous
reputable Native American organizations such as the National
Congress of American Indians and the National Coalition on
Racism in Sports and Media, the unauthorized use of Native
American imagery and logos, symbols, and mascots remains
prominent.
It is Calvert's firm belief that public awareness
and education are critical to the advancement of fair and
accurate portrayals of Native Americans, their cultures,
histories, and traditions. We believe that the Patent and
Trademark Office has an important role to play in this
effort. The government agency's business statement as
stated in Article I, Section 8 of the Constitution is as
follows: For over 200 years, the basic role of the Patent
and Trademark Office has remained the same, to promote the
progress of science and useful arts by securing for limited
times to inventors the exclusive rights of their respective
discoveries.
The cultural heritage and traditions of native
people should be afforded the same protections under the
law. By allowing corporations and sporting organizations to
use unauthorized Native American insignia as part of their
marketing efforts, the Patent and Trademark Office is, in
fact, sanctioning this infringement with the government seal
of approval.
We thank you for the opportunity to comment.
MS. MARSH: Thank you.
3. MAMIE RUPNICKI
MS. MARSH: Our next speaker is Mamie Rupnicki.
MS. RUPNICKI: I usually don't need a mike.
Good morning. Thank you. My name is Mamie
Rupnicki. I'm chairwoman of the Prairie Band Potawatomi and
speaking on behalf of my tribe. Perhaps you need to know a
little bit of history of it. We come from around the Great
Lakes, but due to the infringement of farmers, settlers, we
were forced to move to the State of Kansas. So, therefore,
we have been there since 1834.
The main thing that I'm looking at, and I didn't
want to read my testimony for the simple reason it's long.
It's tedious, and that means I know absolutely nothing about
what I'm talking. So what I want to do is kind of opt out
what is in my testimony, and I also request that my full
written testimony be entered into record along with our
logo, the resolution, and a portion of the minutes where we
adopted the logo.
Current trademark law disallows registrations of
trademarks that consist or comprise a flag or a coat of
arms, insignia of the United States, of any state, and its
all recognized everywhere. No one is allowed to use without
proper approvement [sic]. There is no similar protection
for tribal official insignia. Right now the function of the
trademarks are to indicate the origin of goods to provide
and guarantee a quality, and that's the purpose of your
trademark law.
The problem that the tribes are facing now is the
unauthorized use of our trademark. Anything dealing with
the Indian Nation is a insult, major insult to the tribes
themselves. We are very close, connected, and hopefully we
have something in place that will protect us. It also, at
some point in time, creates confusions as to tribe supports
are associated with the product or service being promoted.
Unauthorized use of tribal insignia by non-tribal entities
and commerce and the lack of adequate protection against
this practice under current trademark law takes advantage of
the identity of tribes without restoring any of the profits
or benefits for use of insignia of the prescribes.
The PTO must be reminded that many tribes consist
of the poorest Americans and that most official tribal
insignia have religious meaning for the tribes.
Unauthorized use of our insignia for profit by someone else
is an affront to our sovereignty, culture, and well being.
I won't go through what out logo says about us. It's very
religious. It has high meaning, and I would not care to
discuss the meaning of.
The need for heightened protection in light of the
aforementioned tribal sovereignty and the federal trust
responsibility, federal trademark law must provide stronger
protection against unauthorized use of tribes' official
insignia. Many tribes have consistently been recognized as
distinct, independent, political communities qualified to
exercise powers of self-government, and the United States
Constitution categories tribes with other sovereigns for
purposes of commerce related functions. When it empowered
Congress to regulate commerce with foreign nations along
with several states and with Indian tribes, U.S.
Constitution Article one, Section 8, Clause 3 stipulates
this.
The sovereignty of tribes have been recognized by
the federal government and at best should be recognized and
protected in its trademark law. Federal trademark law
should at least provide the same amount of protection if not
more to Indian tribes for the unauthorized use of their
official insignia as it does for other sovereigns. The
federal trust responsibility actually calls for heightened
protection of the interest of Indian tribes over that of
other sovereigns.
The trust responsibility requires that the federal
government act in a manner that furthers the best interests
of the tribes. As an office of the federal government, the
PTO must honor the federal trust responsibility owed to
tribal governments by instituting protections against the
unauthorized use of tribal official insignia, and I'll make
my suggested changes.
We support, the Prairie Band supports and
incorporates by reference the suggested changes to the
current federal trademark law by the Tuolumne Band of Me-Wuk
Indians in its April 30, 1999 comments to the PTO. The law
should preserve the ability of tribes to register the flags,
coat of arms, and official insignia, but the law should be
amended to prohibit the registration or use of this insignia
or simulations thereof unless the tribe authorizes such
registration or use, and the way that the tribes--the way
that our tribe operates is to do it by resolution. That is
a law within our tribe, and everything must be included for
that use.
Further, trademarks consisting of or compromising
tribal official insignia registered before the enactment of
this amendment should be cancelled immediately upon the
amendment becoming law. If a trademark owner can prove that
the tribe authorized its use of the insignia, then such
trademark would not be subject to cancellation. Only those
persons who have deliberately used the official insignia of
a tribe or a simulation thereof without the tribe's
authority would be affected by such a cancellation
provision. Definition of a tribal official
insignia should include flags, coats of arms, seals, and
other emblems of tribal governmental authority. It should
be defined as any symbol used by a tribe to signify its
identity or any symbol identified by the tribal government
as official. Merely banning third party registration of
marks identical to a tribal official insignia is not enough
to fully protect a tribe's interest. The law must also band
simulation thereof.
I believe, also, that at some point in time when
we are putting these amendments to the--when we are looking
at PTO, that there should be a separate piece to where we
have a federal line as into the Federal Register, these are
all the federally-recognized tribes. These are their
insignias. These are their logos. These are their flags,
and I believe that's the main thing.
As United States has its stars and stripes,
everywhere they go they say, Well, that's United States. We
as tribes also use that and recognize it within other tribes
as our logo. But it's the Non-Indian or the commercial or
the corporation who misuse. So that's what I would be
looking at.
The Prairie Band contents that the administrative
feasibility should not be an issue when discussing how the
general government will honor its trust responsibility to
the Indian Nation. In addressing this concern, however, we
believe that the PTO will not be unduly burdened by the
changes to trademark laws suggested in this testimony. The
PTO is equipped to handle these tasks without undue burden.
The impacts on the PTO prohibiting new
registrations and use of tribal official insignia by
unauthorized third parties would be minimal. Indian tribes
would be significantly benefitted by prohibiting new
registrations and use of tribal official insignia by
unauthorized parties. It would provide the protection they
deserve under federal trademark law. The only persons who
would be negatively affected by such changes to federal
trademark law are those who currently use tribal official
insignia without the tribe's permission for their commercial
gain, and those people should be prevented from co-opting
our symbols regardless of the burden or cost of obtaining a
trademark or proving that the tribe did indeed authorize
their use of the insignia.
The burden should not be on the tribes which have
limited resources to police the federal trademark register
and file proceedings against all instances of unauthorized
use and misappropriation. On behalf of the Prairie
Band, I want to thank you for this opportunity to
participate in the process to better protect tribal official
insignia. It is a problem that must be remedied. Failure
to do so erodes our sovereignty, offends our history,
culture, and religion.
MS. MARSH: Thank you. Just one question.
MS. RUPNICKI: Yes.
MS. MARSH: Did you say that you included in your
written materials a copy of your insignia?
MS. RUPNICKI: Yes.
MS. MARSH: Does that include all insignia that
you think would be--
MS. RUPNICKI: This is the only one pertinent.
MS. MARSH: Okay.
MS. RUPNICKI: Because it's drafted on our--it's
drafted on our stationery, and it's drafted on official
resolutions, and when someone wishes to see our minutes,
sometimes we incorporate it there too.
MS. MARSH: That will be useful to us. Even under
our--as I mentioned, under our current law, there are
sometimes provisions of the statute that prohibit
registration of insignia such as this, and we have a problem
in the office with just being knowledgeable about
recognizing insignia, and so we can use this.
MS. RUPNICKI: Well, my problem is that I'm really
not clear on the process that you use, and I think a
majority of the tribes are unclear of a process. I feel
that if information could go out to the tribes and be
disseminated out amongst them, that they're aware of it.
I feel at a disadvantage. I'm the only tribal
leader here, but I'm very interested because of the
different little blurbs that are coming out about using the
Indian in their little comedy-type sketches and whatever
else goes along with it; and the way I feel, if it was a
black individual, they'd be on top of it, but we're not that
many that we can hold major things to where we can get it
done. If there were more of us, perhaps we would be able to
and our vote counted where it should be.
Then I think we would be able to do something, but
as it stands now, we are at a point of maybe four million
people, very small. Although I don't claim to be a
minority, we are still small nations within this nation, and
I think that process needs to be recognized.
But if you need my help on drafting some of this,
I have no problem doing it.
MS. COHN: Sharon mentioned in her introductory
marks we have a letter of protest procedure that probably
not many people are familiar with, and that allows a third
party such as yourself, at no cost, to file a protest with
the office supplying evidence that we may not otherwise have
access to as to why this mark shouldn't be registered, the
fact that it's a religious insignia or some type of symbol,
and this gives you the opportunity to educate the office if
you feel that we're ignoring a very important aspect of a
certain tribe.
MS. RUPNICKI: I think the other information that
I would probably need is just how do I go about doing this.
MS. MARSH: Well, for the letter of protest
procedure that Debbie mentioned--
MS. RUPNICKI: I can protest it all.
MS. MARSH: We have to be aware that--
MS. RUPNICKI: Yes, it's coming in.
MS. MARSH: It sounds like you would advocate a
procedure, setting in place a procedure for tribes to submit
to the PTO--
MS. RUPNICKI: Yes.
MS. MARSH: --their insignia and sacred symbols.
MS. RUPNICKI: And maybe get a little newsletter
out, Okay, this is coming out. This is what we're looking
at. A large majority of the government agencies, we usually
get something to that effect, and this is coming up and
whatever. Okay.
MS. MARSH: Thank you.
MS. RUPNICKI: Thank you. I appreciate it.
4. MELODY L. MCCOY
MS. MARSH: Our next speaker is Melody McCoy.
MS. MCCOY: Good morning. My name is Melody
McCoy. I'm a staff attorney with the native American Rights
Fund in Boulder, Colorado, and I'm here today on behalf of
one of the Native American Rights Fund's clients, the
Tuolumne Band of Me-Wuk Indians who are located in east
central California. And the Native American Rights Fund
is a national non-profit legal defense fund for American
Indian tribes. We're very interested in this issue about
trademark law and tribal official insignia because we
represent the Tuolumne Band on better protections whether by
means of tribal or federal law for all of their intellectual
property. So this caught our attention last October as a
very timely step in this area.
I appreciate this opportunity to address the
Patent and Trademark Office this morning on the statutorily-
required study. The tribe has already submitted written
comments in February and in April in response to the
agency's notices, and we're very pleased that federal law
may extend trademark protection to tribal official insignia.
My comments today will focus on the legal and
policy reasons, how we suggest this extension be
accomplished. Federal law, of course, recognizes trademarks
as a form of intellectual property, and at present there are
few federal laws that specifically protect the intellectual
property of American Indian, Alaskan native tribes, but
there should be federal laws, and there can be, I think
especially in this really specific and focused area of
tribal official insignia.
At least since the United States Constitution was
adopted, federal law has recognized that Indian tribes are
separate sovereign governments, and under current trademark
law, the official insignia and flags of other sovereign
governments--that would be the federal government, the
states, foreign nations--cannot be registered. That is
viewed as good because the non-registrability of the
insignia and flags prevents exclusive use by anyone of the
official insignia and flags of the federal government, the
states, and the foreign nations.
Congress has wisely chosen to preclude this
exclusive use of governmental authority emblems. So it
might be easy to say that all that needs to be done is to
add tribes to this list of sovereigns. Tribes are
sovereigns just like the other governments, and they should
have the same protections as the others regarding their
official insignia. I call this the "parity theory" by which
Congress would simply be correcting an oversight or an
omission and putting tribes on a par with the other
governments. This is an attractive option and one that
would be completely justifiable.
The tribe here, however, has suggested another
approach and one which we also believe is justifiable. Our
suggested approach is this: Since there is now to
prohibition on the registrability of tribal official
insignia or flags under federal trademark law, anyone,
including the tribes themselves, can register their official
insignia provided that all the other requirements are met.
We suggest that this registrability for tribal official
insignia be preserved but that it should be made exclusive
to tribes.
And I'll explain the justification for this
approach in a minute, but let me first make clear that our
suggested exclusive right for tribes to register their
official insignia is not the one-way street in favor of
tribes that it may seem. This is largely because we suggest
that the definition of tribal official insignia be very
narrow. It should follow the definition that the Patent and
Trademark Office and the courts have developed when
determining the official insignia of the federal
governments, the states, and the foreign nations. That
means it would be only those emblems, devices, which
represent governmental authority such as seals and flags.
Most tribes, in fact, already have an official
seal or a flag that they have developed according to their
own internal procedures, whether that's a political process
or a religious process or some other established form of the
tribe. They've been using this regularly for governmental
purposes.
A critical part of our suggested approach is that
tribal official insignia should consist of words plus
graphic elements. Words alone, including tribal names,
should not be considered tribal official insignia. Again,
this is consistent with how the official insignia of other
governments have been defined, and it eliminates the
controversial issue of whether tribal names in and of
themselves should be eligible for trademark registrability.
This, to me, really is a parity issue. It's not unique to
tribes.
The names of states are not in and of themselves
considered the official insignia of states for trademark
law. Neither should tribal names in and of themselves be
considered tribal official insignia. We suggest, however,
that trademark law and other federal law generally be
reviewed to see what if any protections tribal names in and
of themselves are warranted. For this purpose, though, the
official insignia, the official insignia of tribes, should
be distinctive, just like, again, the official insignia of
the other sovereign governments.
The reasonable equivalences of tribal official
insignia, like reasonable equivalences of non-tribal
governments, should be protected. I think this is going to
avoid the situation where a tribe, for example, as the
official insignia of, you know, three arrows and a quiver
and, you know, a non-tribal entity attempts to use four
arrows and a quiver or something like that. Reasonable
likenesses should be protected.
I think the Patent and Trademark Office is very
familiar with that kind of issue. It comes up all the time.
We suggest that Congress direct the Patent and Trademark
Office to establish a separate dedicated registry of tribal
official insignia. Since tribal official insignia are
somewhat new to the Patent and Trademark Office, this data
base would be really useful for all interested parties,
tribes, non-tribal entities, even the other governments.
However, presence on the registry would not in and
of itself provide positive trademark rights for tribes.
There we're going to need some amendments to the law to
obtain the positive trademark rights. Tribal official
insignia, once on the registry, would then need to be
registered as a trademark just like any other trademark, but
we suggest that the law provide that in the future tribal
official insignia can only be registered by tribes unless
the tribe consents otherwise. In addition, any tribal
official insignia that happened to have been registered or
used by third parties without tribal consent as of the date
of the law should be subject to cancellation or infringement
proceedings.
Now, this exclusive right regarding the
registrability of tribal official insignia is, again,
treating tribes a little bit different than the other
sovereigns because we're not going to have the complete ban
on--we don't suggest the complete ban of registrability of
tribal official insignia, but we think our exclusive right
suggestion is justified first and foremost by the legal
relationship which is unique between the United States and
Indian nations.
The federal recognized sovereignty of tribes
expressed so many time in so many ways by Congress is really
important for the Patent and Trademark Office to understand
in executing this study because tribal sovereignty is going
to be the basis by which Congress is going to address this
matter. Our suggested approach is also justified because of
the very narrow definition of tribal official insignia that
we pose mitigates and eliminates any negative impact on
third parties, and negative impacts could also be minimized
by the traditional forms of patent and trademark law
defenses that they could be able to show tribal consent as a
defense to cancellation. It would provide for a fair use
that is a non-commercial education type of use defense to
infringement claims.
That's our approach. The Native American Rights
Fund and the tribe thank you for this opportunity to testify
today on this important matter. I'd be happy to try to
answer any questions or provide further information to help
you.
MS. MARSH: I just had one question. You said
prior registrations would be suggest cancellation. So would
you envision that there would be a burden on the affected
tribe to bring a cancellation proceeding through our current
mechanism rather than just a blanket when the law is enacted
the registration cancels?
MS. MCCOY: I guess I hadn't really thought about
that myself. I'm not sure how it works outside the area of
Indian law. You know, generally when something--like the
Redskins decision simply cancelled that trademark protection
for that, but that was after voluminous evidence.
MS. MARSH: Right.
MS. MCCOY: What's the norm in trademark law when
something is cancelled?
MS. MARSH: The normal procedure is that an
interested party has to affirmatively bring a cancellation
proceeding to our office, and then the parties have a chance
to, you know, debate the issue, and then a decision is made
on the merits.
MS. MCCOY: One thing that occurs to me--it
doesn't answer your question, but I'm having trouble
imagining that a non-tribal party has registered what I
would call a true tribal official insignia at this point
without it being the tribe or an entity thereof. But let's
say as a practical matter it might not be such an issue.
The other thing is I'd be happy to provide an
answer to this at a later time, but I'm thinking that if in
this instance if proper notice is given through the
development of this law before it's enacted, I don't see why
immediately upon enactment of the law that they shouldn't be
subject to cancellation, and the burden should be on the non-
tribal party to show that they have the authorization.
Because I think that's what we're really looking
for. If people want to use an official--if a non-tribal
party wants to use an official tribal insignia, they should
have the consent of the tribe, you know, so that they can
work out among their own the kind of commercial recompense
or royalties or whatever they want from that, and the tribe
should be free to license that, but it shouldn't be that the
tribe has to establish that you've misappropriated our seal.
MS. MARSH: Thank you.
MS. MCCOY: Thanks.
MS. MARSH: One more question.
MS. MELTZER: Thank you very much. In your
remarks, you mentioned that the official insignia should not
be eligible for registration by others unless the tribe
consents. My understanding is that currently licensees,
that is authorized parties, are not eligible to register the
mark. Only the true owner of the mark is eligible. Would
you suggest an exception to the current state of law so that
licensees, authorized users of official insignia of native
American tribes, would be eligible for registration of those
marks?
MS. MCCOY: I'm trying to think of what they would
get by registration as opposed to the license itself. It
seems to me it would be governed by that. I guess, again, I
hadn't picked that one apart so much. My intuition is that
if--is that the registrability should be allowed. I just
think, again, in a practical sense it's rare that the tribe
is going to license its official seal to anyone to be
registered. They're going to want to hold on to the
registrability of that.
So probably then they should have the
registrability. If the same benefits to the tribe in terms
of licenses can be accomplished just through licensing, then
I would say stick with that.
MS. MARSH: Thank you.
5. WILLIAM LOCKARD
MS. MARSH: Our next speaker is Mr. William
Lockard.
MR. LOCKARD: Good morning. My name is William
Lockard. I'm an attorney practicing in Los Angeles,
California. I'm appearing today to set forth concerns I
have as an intellectual property practitioner and academic
with the suggestion that Native American tribes be granted
trademark or trademark-like rights in their official
insignia. First, let me set forth by
background in the field. As I said, I'm an attorney
licensed to practice in California. I've been an
intellectual property practitioner for the last 10 years,
concentrating in copyright and trademark issues. I've
served as a vice president of legal affairs at Fox, Inc.,
which is the parent company for Twentieth Century Fox and
Fox Broadcasting, and for Metro-Goldwyn-Mayer, Inc., which
is the parent for MGM, United Artists and Orion. I'm
currently of counsel with the firm of O'Donnell & Schaefer
in Los Angeles. For the last several years I've also served
as an adjunct professor of law at the University of Southern
California Law School where I teach classes in copyright and
intellectual--sorry--internet law.
I have a number of concerns, some of which are
academic, some of which are practical about the suggested
enactment of the rules concerning Native American insignia.
Starting with the more conceptual problems, my concerns, I
think, are based on the idea or flow from the fact that
trademarks are monopolies. They're limited monopolies which
are granted by the government in order to achieve certain
other goals.
Normally, monopolies are disfavored in law, but
with the trademark law, we grant monopolies, limited
monopolies in order to achieve goals concerning unfair
competition and consumer fraud and deceit protection.
Because they're monopolies, I think we need to watch
carefully to make sure that those monopolies are not granted
in a broader way than they need to be to achieve the limited
goals that we have.
As a result, in the trademark law of the United
States, trademarks are limited in terms of time, in terms of
subject matter scope, and at times in terms of geographic
scope. Somewhat elegantly, I think, in the law, all of
these limitations are achieved through the simple
application of a use requirement. Trademark law requires
use in order for trademark rights to be generated. This use
requirement has the additional effect of letting the
limitations be moderated as trademark use continues without
the need for additional involvement, other judicial or
administrative involvement.
So trademark right expands and more importantly
contracts when the monopoly needs to because the use has
been reduced. It's a concern, therefore, to talk of
creating trademark rights which don't have a use requirement
attached to them. Indeed, I think that the use requirement
is so central to really the whole concept of trademark that
really we're not talking about trademark rights. We're
talking about what I'd like to refer to as supertrademarks,
trademarks that are really governmental charters that are
grants of rights directly from the government rather than
trademark rights.
Now, those kind of grants are not inherently evil,
and the government has made such grants in the past. Groups
such as the United States Olympic Committee, the Boy Scouts
and the Girl Scouts, the American Red Cross, all have been
granted statutorily exclusive rights to use their emblems
and names. Whether or not you agree with those grants and
the appropriateness of those kind of--those particular
grants, I think there are distinctions to be drawn with the
grants that have--the grants that exist--the grants of
supertrademark rights that exist in the law versus the kind
of grants that are looked for here. Generally, the
grants that exist in the law to date which are few in number
are grants to organizations which are clearly charitable
organizations, and they relate to marks which were already
exclusive to those groups and which were identified
commonly, I think, by the public even prior to the grant of
rights with those groups. Here, we have a different
situation, I believe. With regard to Native American
tribes, while they certainly have at times a charitable
aspect to them, they are very complicated organizations.
They are political organizations. They're economic
organizations. They're cultural organizations. So they
don't have the same identity that supertrademarks have
previously had. In addition, the kind of marks that are
potentially going to be protected under this law are not
necessarily marks which are familiar to the public and which
are related already in the public's mind to some extent
exclusively with the tribes.
The world is full of emblems and symbols which
have been and which continue to be of central cultural
importance to the original group in which they were created.
The plays of Shakespeare, the pyramids, the Coliseum, Mount
Fuji, the Star of David, Wagner's Ring Cycle, the Liberty
Bell are all important and vibrant elements of their native
cultures. It would be literally impossible, I think, to
list, let alone to grant rights to the important emblems of
each of the many groups that exist in our society.
Moreover, these emblems and insignia exist
independent of any grant of governmental rights. They
maintain their vibrancy and power without such protection,
and there doesn't appear to me to be any distinction with
warrants, particularly warrants treating the insignia of
Native American tribes differently.
Moving away from the conceptual and academic,
there are some practical issues, I think, in terms of
granting these rights. Obviously, there's a complication
that is added when you add any mark to the register, when
you add any particular group of marks to the register.
There are higher costs. There are higher searching costs.
There are higher costs in terms of a greater number of
potential marks which are going to be knocked off by things
that are on the register, but I think this cost is even
higher than it appears on the face in that supertrademark
rights are very broad and far reaching. It's essentially
equivalent of a grant of rights in all classes for all goods
and all services.
When I deal with supertrademarks in practice, I
find it difficult to advise a client on how to proceed when
a potential mark of the client may conflict with or
potentially may conflict with a supertrademark. While you
can draw distinctions, there is a real fear that the kind of
rights that are granted, that have been granted with
supertrademark are so broad that you are likely to run into
a real risk of a claim, which has its own costs regardless
of whether you win, and of a loss on the merits in court,
particularly given that a court is likely to be strongly
influenced by the grant of a supertrademark by Congress, by
the congressional determination that these kind of
trademarks should be granted broad rights.
Because clients are generally risk adverse, and
the clearance issue is one of evaluating risk, the effect is-
-to me, the effect of this is that when the supertrademark
is implicated in the search, the tendency is simply to back
away from it altogether and to move on to a different mark
which really grants these supertrademarks an even greater
penumbra of rights than they are by the broad statutes that
they have. As a result of this, there's sort
of a series of black holes in the area of trademarks, areas
that you just avoid because you're going to get sucked in
and destroyed by them. Right now, those are limited.
There's a small number of supertrademarks. I think when we
talk about the enactment of rights in the tribal insignia,
we're adding a vastly large number of supertrademarks with
which people have to be concerned, and we're creating a
vastly large number of these black holes that create serious
problems in terms of developing and creating new trademarks
in the commercial world.
Internationally, I think there's an issue to be
concerned with. Some others, I think in the submissions,
have raise the question of making sure, of course, that we
were in compliance with all existing treaty obligations of
the United States. Obviously, that needs to be a concern.
At the same time, I think there's a concern with regard to
the potential future problems in trade negotiations that the
grant of rights might create. Over the last
several years the question of whether and how to protect the
interests of indigenous peoples in traditional works or
materials has become more prominent throughout the world.
Regardless of your particular stand of the appropriateness
of U.S. protection of Native American insignia, it's clear
that the protection of materials of indigenous peoples has
the potential to cause substantial international trade
problems.
By way of example, consider the possibility that
Greece passes a law saying that no one may make commercial
use of the words Apollo or Nike or that Germany decides to
revive copyright protection for traditional folk tales in
the forms of Snow White and Cinderella and Hansel and Gretel
and other Grimms fairy tales or even that Japan bans the
importation of rice, not based on trade protectionism, at
least not purportedly, but rather under the idea that it's
protecting traditional farming methods that are culturally
important to Japan. In each of these cases U.S. commercial
interests are certainly implicated, and the U.S. government
will certainly be called upon to intervene diplomatically.
I think what we need to be concerned is that it
will be particularly difficult for the U.S. government to
act in these cases if, indeed, the United States Government
was one of the first countries to move ahead to protect the
rights or to grant special rights or extraordinary
protections to its own native indigenous peoples.
We ran into a similar problem, I think in the
eighties, with regard to copyright where the copyright
industries were very concerned about problems in trademark
and the copyright laws of other countries. They came to the
Commerce Department, asked the U.S. trade representative to
intervene with particular countries who were a particular
problem, and the response of those countries was how can the
United States come and tell us how to write our copyright
law when, in fact, the United States is not a signatory to
the primary international copyright convention, does not
keep up to what are the accepted international standards in
copyright law, and now you're coming and telling us that we
should change our copyright law. And that's a powerful
argument, and it's difficult to respond to, and it gives
foreign governments a strong basis to object to the
diplomatic intervention of the United States.
The last issue I want to discuss is a sort of
overall issue which is a question of the relative benefit
and costs. First, we shouldn't lose sight of the fact that
Native American groups are fully entitled to protection
under the existing trademark laws and, in fact, make use of
that to some extent. Those protections, as have been
discussed here this morning, extend to more than just
registration of marks. They also provide protection for
unregistered marks and protection against the disparaging
use of insignia and trademarks, whether or not the
complaining party has trademark rights of that insignia.
The recent decision in Harjo v. Pro-Football makes it clear
that this is a meaningful and enforceable right. So in many
of the most important ways, these insignia are already well
protected.
Second, it's not clear when you work through the
analysis what tangible benefit the protection of Native
American insignia would actually offer to native American
tribes. So the direct use of these insignia in commerce or
in trade or as tribal symbols is protected, is already
protected under the law. The suggestion that there should
be protection for these insignia across the board in all
classes and pertaining to any mark which has a likelihood of
confusion with those symbols, I think is unrealistic and
potentially disastrous given that a number of these symbols,
emblems, are likely to be more simple designs which is not
possible to really pull out of the public domain and give
exclusive rights to, which means you're left with the
possibility of granting rights, exclusive rights to insignia
only to the extent that they're not--that they're copied
exactly, which means realistically any potential user will
simply make the necessary changes to make certain that the
emblem that they want to use is not an exact duplication of
the insignia.
Again, I don't think that this ultimately results
in a net benefit or a strong net benefit to the Native
American peoples. Clearly, as a philosophical and political
matter, protection for Native American insignia has
substantial meaning, but it's difficult to measure against
the commercial considerations, but the insignia and cultural
emblems have a wide range of other entities, and groups
within our society also holding substantial meaning and
protection of these insignia and emblems from disparagement
and offensive and commercial use is inappropriate--I'm sorry-
-is appropriate and already available in the law.
I think offering extraordinary protection to any
of these insignia or emblems creates little meaningful
additional benefit while inflicting a substantial practical
and financial cost on the public domain, governmental
resources, and the commercial marketplace. Thank you.
MS. MARSH: So you have no problem, though, with
the existing provisions of the Lanham Act on disparaging
marks, marks that create a false association with a
particular tribe?
MR. LOCKARD: No. In fact, I think that adds to
the balance that you need in the law, both to protect tribal
insignia and the important emblems of any group in society.
MS. MARSH: And you wouldn't object to the PTO
making a greater effort to become educated about what these
native insignia are so that we can identify them when
they're the subject of applications?
MR. LOCKARD: Certainly not. Education is always
good.
MS. MARSH: Yes.
MR. LOCKARD: Knowledge is power.
MS. MARSH: Yes. Do you guys have anything?
MS. MELTZER: I have one question.
MS. MARSH: Okay.
MS. MELTZER: Mr. Lockard, you mentioned that many
groups within our society have insignia and cultural emblems
that are important to them. Could you discuss, just
briefly, if there's any distinction with Native Americans
given the U.S Government's trust relationship with Native
American groups?
MR. LOCKARD: It's not a question I've thought
about. Obviously, that is an additional consideration. I
believe that to the extent there is some additional duty on
the part of the United States Government to act as a
fiduciary, to consider the needs of its trustee, the overall
considerations about the benefits and the burdens don't
evaporate. They still exist, and I think ultimately when
you go through the analysis, you say, well, while there may
be some additional push to put this provision in the law,
it's still outweighed by the practical concerns and by the
cost to society and particularly when you consider the
limited actual benefit that the Native American tribes may
receive from it.
MS. COHN: I have a question. In the last part of
your remarks, you talked about, I think, your fear is that
an insignia may contain a certain element that is commonly
used in other marks.
MR. LOCKARD: Yes.
MS. COHN: I'll use a feather as an example, and
your fear is that nobody will be able to use a feather in
any other form outside of that insignia?
MR. LOCKARD: I don't think it's quite that
extreme, although obviously at its most extreme, that would
be a concern. I think the concern is if we look at this
from the standard trademark point of use and apply a
likelihood of confusion analysis, you end up in a situation
where the number of marks that are potentially knocked out
is very large, particularly if the protected insignia do not-
-are not particularly complicated and don't have
particularly strong identifying elements of their own.
MS. COHN: Well, isn't that true with any mark?
MR. LOCKARD: It's true with any mark, but it's
not--but this is where we run into the use problem. When
we're dealing with a supertrademark, and you're saying
essentially you have rights in this insignia in classes one
through forty-two for all goods and for all services and
saying now we're going to apply a likelihood of confusion
analysis, we're banning a remarkably large number of
potential marks and taking, really, an usually large number
of potential marks out of the public domain, to what I think
is limited benefit.
MS. COHN: But of course that rationale would not
apply to a Section 2(a), False Association Analysis; right?
You're not opposed to having that available?
MR. LOCKARD: No, no, and I think that may be an
appropriate route to take, is to say that to the extent that
people are clearly using a mark in order to get an
association with a particular tribe, it may be appropriate
to put in some kind of requirement as well in order to avoid
inadvertent infringement and the kind of traps that fall--
the trap of falling into an inadvertent infringement.
MS. COHN: That's not currently in Section 2(a).
MR. LOCKARD: No, but it currently is applied to
some of the other supertrademarks that are in the law.
There is some kind of knowingness or intentional
requirement.
MS. COHN: Thank you.
MR. LOCKARD: Thanks.
6. AMBASSADOR CHARLES W. BLACKWELL
MS. MARSH: Our next speaker is Ambassador Charles
Blackwell.
AMBASSADOR BLACKWELL: Good morning. My name is
Charles Blackwell. I am the Chickasaw Nation Ambassador to
the United States of America, a lawyer and a schoolteacher
by training and a diplomat by trade. I come to you this
morning on behalf of the 40,000 members of the Chickasaw
Nation and Governor Anoatubby to speak to you generally on a
policy level.
I want the record to be clear, and I want the
record to reflect that I am Chickasaw. I am a lawyer, but I
am not an intellectual property expert. Having grown up and
been raised in Indian country in South Dakota and New Mexico
and Oklahoma, I fully see that, as a matter of policy,
there's probably a great need for a heightened level of
awareness of the trust responsibility as it applies to
American Indian tribal governments, American Indian, Alaskan
Native and Native Hawaiian tribal governments and through
which the individual rights of American Indian, Alaskan
Native and Native Hawaiian citizens are further refined and
protected under the trust relationship, and it is protection
which indeed is what we're talking about.
This was dramatically brought home to me some
years ago when I first moved to Washington and took myself
to an upscale carryout gourmet place to buy food to take
home, and on the floor was a large basket filled with the
packages of Chickasaw Chips, the dirty chip, the dirty
potato chip. My first thought was that maybe we had begun--
unbeknownst to me, maybe the tribe had begun to manufacture
and produce and market and sell potato chips.
I picked up a package and looked at it, and they
were being done in Memphis, Tennessee by a company who had--
was not owned by the tribe, had no affiliation with the
tribe, and after I spoke with them, which I took the
initiative to do, weren't aware of the fact that the tribe
still even existed. Like many Non-Indians in Mississippi,
Alabama, and Tennessee, and Georgia, they think that after
the removal, the tribe went away which meant that we
perished. We haven't. The Chickasaw Nation is alive and
well and functioning very happily in former Indian
territory, now the State of Oklahoma.
So Chickasaw chips, the dirty chip, inspired me
both as a lawyer and as diplomat to begin to increase my
awareness of this. My personal dedication is to assisting
you on behalf--and the federal government in taking a good
look at this process. We're especially grateful to Senator
Bingaman and Senator Campbell and our champions in the
Congress who assist you in this matter as well. I
submit for the record my written testimony, and I will point
out, though, that perhaps a further discussion or further
review of the trust responsibility, the federal trust
relationship of American Indian tribal governments is
appropriate. As domestic sovereign nations, we are not
covered by any particular law. We are--our status is
embodied, in fact, indeed, in the commerce clause of the
Constitution, is where it begins, further affirmed by the--
by acts of Congress, by Supreme Court decisions, by
executive orders.
We are unique in the scheme of things. For those
who are uninformed, perhaps to look on us in some way as
comparable to the states, we have citizens that we're
responsible for. We have land that we oversee. We have
inherent sovereign powers to determine the rights of our
membership, to exclude those from our lands whom we would
not have there, and to choose our own forms of government,
and to present to the world our identity; and it is in the
intellectual property area that is this identification of
the symbols and emblems of our governments.
The Chickasaw Nation has a seal. The Chickasaw
Nation has a name. The Chickasaw Nation has a tribal
identity, to the best of which the federal government has a
fiduciary trust responsibility to assist the tribe in
protecting, but prior to European contact, I would suspect,
having not been there but being somewhat of a historian and
being Chickasaw, I would have suspected that tribes had
their marks.
The Choctaws and the Creeks were traditional
enemies. Their land was side by side in Georgia. To know
whenever you were leaving Creek country and entering into
Choctaw country was important for people to know who were
not of those tribes, and there were marks along the trails.
So there's a historical appreciation among the tribes
themselves for their symbols of government and identity; and
I'm reminded by some of the testimony today that the tribes
will, as a matter of policy, be very supportive and very
grateful and willing to be involved in the process to help
where voids of information do exist.
I would suggest that the Non-Indian literary
industry, cinema industry, and others have done all they can
and all they should, perhaps, and the entertainment
industry, to embellish on tribal identity. In the history
of this country, there have--we've gone through periods of
time when American Indian tribal governments have been
diminished militarily and economically. That is no longer
the case and simply by our presence, 553 strong, we know
that for as long as there is a United States of America,
there will be American Indian tribal governments and
American Indian people to deal with.
So as a matter of policy, I think that lays the
foundation for attention to the matter. As a practical
matter, we suggested a registry of American Indian tribal
government insignia. This is, we view--the insignia of
individual governments, we view to be just as choosing their
membership, to choose the marks to identify them as
Chickasaws or Choctaws or as Crows or as Cheyennes, is an
inherent sovereign right of that tribe, and it seems a
little daunting, I'm sure from your side of the table, to be
dealing with--to have dealt in the past with an identifiable
group of organizations or states or peoples and to have 550
added to that, but we're patient people. We've been dealing
with these matters for hundreds of years and however long it
takes, we're willing to continue to deal with it.
We would urge a beginning to be made. I support
the testimony presented by the Native American Rights Fund,
and as I've noted we appreciate the support and the
attention of Senator Bingaman and Senator Campbell and
Senator McCain and their colleagues, Senator Inouye, who are
helping bring attention to this matter.
In highlighting and reviewing my written
testimony, we have offered suggestions on how official
insignia should be identified and how we urge the Patents
and Trademark Office to establish a register that embodies
the trust responsibility, and whereas I would suspect--the
Chickasaw Nation, and I would suspect all tribal nations
governments would be interested in doing things that
maintain a parity as the governments of domestic sovereign
nations with other governments. And as an aside, I would
say that recent attention and activity in this area only
points out the need for increased awareness and sensitivity.
Whenever I called the folks in Memphis to ask why
they called it Chickasaw Chips, they said it had a ring to
it, and they didn't think it bothered anybody, and they were
somewhat surprised. I suggested to them that the Chickasaw
Nation, being alive and well and having an education
foundation trust fund for its young people, would appreciate
contributions based on their profits, and they changed the
name.
So we--it's been my experience both as an attorney
and as a diplomat and as a Chickasaw grandfather that if you
don't--you never get kissed unless you ask. So we're asking
you to address this matter, and we'd appreciate your
attention. Thank you for the opportunity to be here. If
you have questions, I'll be pleased to entertain them.
MS. MARSH: I don't think so. Thank you.
AMBASSADOR BLACKWELL: Thank you.
[Q. Todd Dickinson enters the hearing at 10:15
a.m.]
7. PROFESSOR ELLEN J. STAUROWSKY
MS. MARSH: Professor Staurowsky is our next
speaker.
PROFESSOR STAUROWSKY: Is it appropriate to first
express my appreciation for the fact that no one fled the
room when they recognized an academic? I so appreciate
that.
My name is Ellen Staurowsky. I'm an associate
professor of sports sociology at Ithaca College. Some of
you may be wondering what sport sociology is, and it's
simply sociology as it pertains to the sport industry,
nothing all that glamorous.
I stand before you today as a private citizen but
also as an educator and someone who has been researching the
issue of Native American insignia, symbols, imagery as
they've been marketed and mediated by corporate entities for
the past five to six years, largely in response to things
that occur in my classroom and questions that my students
raise. So I'm compelled from an educational perspective to
look at this, and I think that's the context out of which my
remarks come.
So you're not going to hear me talk a lot about
trademark law. In fact, I'm way out of my element on that,
but I'm going to talk about the social context out of which
policy decisions and legal statutes are often written.
I would like to express my appreciation to the
commissioner and to the staff for this opportunity to offer
my comments and a special thank you to Eleanor who I've been
dealing with specifically.
I'm only going to address two particular points
that were raised in the December Federal Register. I'm
going to talk about the broader issue of the definition of
the term official insignia, and then I'm also going to
direct my comments to the seventh issue which had to do with
other relevant factors.
On its face, the prospect of formulating a
definition for the term official insignia of federally
and/or state recognized tribes appears to be fairly
forthright. One might venture to propose, consistent with
definitions as they appear in various dictionaries, "any
badge of authority of honor, mark, signifier, sign or symbol
that's accepted by a recognized tribe would qualify as their
official insignia". At some level, that is in fact how it
should be.
The realities that necessitate this study testify
to the fact that the matter is not nearly so simple. The
long-standing history of corporate appropriation of Native
American symbols, imagery, and personages in the mass
marketing of consumer products throughout the century
presents a significant collection of concerns that should be
addressed and appreciated in the context out of which any
definition emerges and will subsequently be applied.
As a departure point, I would assert that
heretofore the major producers, disseminators, and mediators
of what is typically thought of as Native American insignia
have been Corporate America and their educational
institutions, not Native Americans. This realization raises
serious questions about how any of us come to know what we
know about Native Americans, what entities create messages
that contribute to our perception of what we know about
Native Americans and the extent to which we've been educated
and socialized to respectfully and carefully address these
issues. Conspicuously, Native American
imagery serves as the basis of community identity for at
least 2,500 elementary and secondary schools nationwide
along with 67 colleges and universities around the country.
As the most visible sign and symbol of the educational
enterprises--of these educational enterprises, the imagery
used in the formation of group identity, team loyalty, local
rivalries, and community rallying points serves as the most
consistent and systematic lesson about Native Americans or
the educational landscape. Nowhere else in American society
has a people's heritage and culture been so neatly, cleanly,
and effectively reduced to the level of a bumper sticker
than in the Native American images selected to represent our
nation's youth sporting teams, wrapped in institutional
authority and official sanction.
It is rare that these symbols are recognized at
the creations of dominant power structures to which Native
Americans have traditionally had little or no access.
Inattention to thoughtful inclusion of Native American
history within school curricula, coupled with the reduction
of Native Americans to stereotypes by our educational
institutions, has served to profoundly miseducate the vast
majority of Americans, Indian and Non-Indian alike. When I
say Non-Indian--or when I say Indian, I refer to my students
in class who comment that they have learned more about their
heritage in a sports sociology class than they did
throughout their former schooling, which I find to be
shocking.
The inherent problem this poses when confronted
with the task of devising a workable definition of official
insignia is illustrated in the case of the Cleveland
baseball franchise. The legal protections afforded by 17
trademarks issued by the U.S. PTO support the club's ability
to perpetuate stereotypes associated with the Native
American community, more specifically the generic concept of
an Indian and a chief. I make reference to what many people
know of as Chief Wahoo.
The very notion of the tribe is codified as a
structural part of the organization by virtue of its
registered trademark--and this is in caps--the tribe. This
convergence of language and symbol, corporate financial
interest, and legal protection has curiously transformed the
Cleveland baseball franchise into a federally-recognized
tribe. Marketing its Indian identity for profit, the club
ranked second only to the New York Yankees in the sale of
licensed merchandise, generating approximately $15 million
in revenue from team shop and catalog sales in 1998.
Comfort level with the Indian images associated
with the club is exponentially increased through mass media
exposure. In a four-hour telecast of a game, a viewer
watching throughout will be exposed minimally to things
Indian an average of 650 times, and that is when the Indians
are playing as opposed to the Indians and Braves.
Despite two decades of opposition from virtually every
Native American group in the country to Cleveland's
continued use of the Chief Wahoo logo on the grounds that it
is a racist symbol, the franchise has leveraged its power of
position and place in the community to persuade the public
that its use of this imagery is justified, assigning--and I
put this in quotes--historical significance, end quote, to
the name. The franchise publishes a story in its media
guides, press releases, web site, and other publications
claiming that in 1915, quote, A local daily newspaper ran a
contest, and the name Indian was suggested by a fan who said
he was doing it in honor of an Indians player named Louis
Francis Sockalexis. Tellingly, the historical claim made by
the franchise significantly distorts the events that
occurred in the club in 1915 and inaccurately represents
Sockalexis' connection to the name.
I point out the article attached which
substantiates which I just said and leads you through that
historical analysis.
In addition to raising questions about whether the
franchise has violated the conditions under which a
trademark may be refused, as delineated in the Lanham Act by
falsely suggesting a persons living or dead or presenting
material that is deceptive, the franchise's continued use of
Native American imagery replicates a pattern of distortion
found frequently when these images are examined closely.
Because an overwhelming amount of competing
insignia already exists representative of the dominant
cultures appropriation of Native American images over a
prolonged period of time, attempts to define official
insignia for federally and/or state recognized tribes will
require the concomitant re-regulation or possible
abandonment of what I call manufactured Indian-like insignia
or Native American symbolic facsimiles that have become such
an integral part of American consumer culture. In effect,
part of the challenge at hand is clearing away of
unauthentic to make room for the authentic.
With that as background, I'd recommend two
specific principles to be used in the formulation of the
definition of official insignia. The first principle being
that primacy be given to native American groups and
representatives. My reason is as follows: Credibility
needs to be afforded to the meanings, values, and
significance of symbols, images, and persons as defined by
the Native American community, not by the dominant culture.
As Native American signifiers have been contested during the
past three decades, there has been a tendency to poll
average Americans about their opinions and viewpoints. In
the case of the Washington football franchise, respondents
have been asked about their attitudes regarding the term
"Redskins". The Cleveland baseball franchise justified the
retention of their name and logo in 1993, citing the results
of a poll of fans who reported that they did not find the
imagery offensive. Many of them citing the Louis Francis
Sockalexis story.
Most recently, there is discussion under way by
the Liz Claiborne company to survey consumers about their
associations with the tag line Crazy Horse. From a research
methodology perspective, these inquiries may, in fact,
reveal the opinions of Americans. It cannot be assumed
however, that the opinions expressed are either studied or
informed. I contend that these studies, for the most part,
violate the fundamental research tenet of logical validity
and ought to be more properly viewed as measures of the
degree to which Americans are undereducated or miseducated
on these issues, rather than as legitimate measures of the
offensiveness of the terms or insignia in question.
This tendency to reduce the verifiable documentable
treatment of Native Americans to mere opinion is confronted
in the dissenting opinion of Associate Chief Justice Durham
of the State Supreme Court of Utah in a recent case
concerning the use of the term "Redskins" on vanity motor
vehicle license plates in that state. The majority opinion
in McBride and Brummett v. Motor Vehicle Division of Utah in
January of this year was, in fact, favorable to the Indian
plaintiffs/appellants which resulted in the decision being
sent back to the licensing bureau to apply a reasonable
person or in this case a reasonable Indian standard in
determining the offensiveness of the term. Although
the decision itself was favorable to Indians, Durham points
out that the majority erred by failing to declare outright
that the term is offensive based on the evidence presented.
He elaborated in his dissent that the majority had ignored
the dictionary definitions and the historical roots of the
term "Redskins" as explained by texts and articles presented
in the case, dismissing all of this evidence as nothing more
than opinion.
Although the creation of avenues for individuals
to voice and express their opinions in a free society is
tremendously important, there is also an implicit and
explicit expectation that cultural histories and religious
traditions will be honored and respected. For too long
Americans have been empowered by romantic mythologies or
permitted in the absence of information to ignore the
tradition and histories of Native Americans as represented
in these symbols. Part of the task of devising a definition
for official insignia is an understanding that it is
inappropriate to selectively render certain heritages,
cultures, and religions debatable while others automatically
qualify for protected status. Whereas it tests their
imagination to think that we would poll Americans to
determine the level of offensiveness that might result if an
acknowledged ritual were parodied and presented as half-time
entertainment, there is little hesitation to invite anyone
to comment about Native American customs, practices, and
traditions, suggesting by the very asking that these are
things about which Non-Indians have a right to comment upon
and at liberty to discount. A stark example of this
emerged in October of 1997 when the Stanford University
marching band performed what they considered to be a satire
of Irish culture, featuring a character called Seamus
O'Hungry whose cultural heritage was depicted by a band
narrator as a sparse one, consisting only of fighting rather
than starving. Additionally, two band members appeared in
costume as a Catholic cardinal and the devil and proceeded
to engage in a mock debate wherein the fictional cardinal
was portrayed as stupid and backward. Although the Stanford
band has drawn upon Catholic stereotypes before in its skits
during famed Notre Dame football contests as evidenced in
the 1991 incident wherein a drum major donned a nun's habit
and led the band while beating a crucifix on a drum, two
things are notable.
Apologies from Stanford University officials in
both instances were immediate, and there were no generalized
calls to survey or poll Americans about whether they found
the behaviors offensive. In contrast, Native American
religious symbols and practices such as the wearing of eagle
feathers, chanting, and dancing have been held up in public
display at athletic contests for the edification of fans and
in turn marketed as consumer items for decades. In the
process, these symbols have been routinely desecrated or
distorted in service to American capitalism in a manner that
would not be tolerated for any other cultural or religious
group.
The steps taken as a result of this study have the
potential to relocate the balance of power where it should
be on these issues with Native America rather than with
Corporate America.
I know I'm running out of time. In terms of
principle number two, I'd urge that there would be a
rethinking relative to persons specifically. I know that
those are included in insignia, and I think that special
steps need to be taken to ensure that the histories of
people like the esteemed Lokota leader Crazy Horse not be
appropriated for fashion.
And in closing, relative to other factors, I'd
urge you not only to consider feasibility and cost, but I'd
also ask you to consider what kind of compelling reasons can
be found by looking at what the potential benefits to this
are, and most specifically I think that there are three
benefits: the restoration of power and efficacy to Native
Americans by returning to them control over the insignia
deriving from their religious and cultural practices and
beliefs; number two, the resurrection of an aspect of Native
American pride diminished and undermined each time insignia
are represented disrespectfully or inappropriately; and
number three, the contribution to a more human and humane
society, more fully informed and educated.
Thank you very much.
MS. MARSH: I just had one quick question. Are
you then advocating cancellation of existing registrations
for any Native American insignia?
PROFESSOR STAUROWSKY: I think as a blanket
comment, yes. Of course, there may be certain specific--I'm
speaking most specifically about educational institutions
and also franchise, professional sport franchises primarily.
So in those two domains, for the most part, I think they
should go.
MS. MARSH: Okay. Any other questions?
COMMISSIONER DICKINSON: My name is Todd
Dickinson. I'm the acting commissioner of Patents and
Trademarks, and I apologize for being a little bit late. I
know that my panelists did a great job without me, and I'm
pleased to be here today and thank you very much for your
testimony, Professor.
I just had a couple of quick questions too. It's
very interesting testimony. A lot of what we have been
asked to investigate by the Congress concerns whether we
should have a registry of official insignia, not whether we
should dwell on the question as we have already dealt with
actually most recently at the TTAB of whether Section 2(a)
should be invoked against particular marks that are found to
be offensive or scandalous, though this is very valuable
information to have. One of the questions we asked at
the previous hearing and solicited from witnesses was the--
whether or not they had sought to register their own marks,
whether the Indian nations or tribes had sought to do that
for their own purposes. Some had apparently and some had
not. Do you have any opinion on the advisability of that?
PROFESSOR STAUROWSKY: I don't feel qualified to
answer that response or that question.
COMMISSIONER DICKINSON: You've noted concerned
about the registration of Crazy Horse for a mark for
clothing.
PROFESSOR STAUROWSKY: Yes.
COMMISSIONER DICKINSON: Would it trouble you any
differently if the Lokota tribes or the heirs of Crazy Horse
sought to register it for clothing?
PROFESSOR STAUROWSKY: I think that that's a
decision that they need to be making rather than the Liz
Claiborne Company simply lifting the term because it's a
snappy term. I think just as the previous speaker talked
about Chickasaw Chips and the fact that there's something
compelling about how that sounds, a marketing agenda is very
different than distorting the history and the legacy of an
esteemed leader who we don't learn a great deal about in our
classes anyway.
We don't have a context out of which we can put
this use in terms of Liz Claiborne up against any kind of
reality about who Crazy Horse actually was to really balance
what's going on, and so what we learn is we learn that Crazy
Horse is associated with malt liquor. We learn that this
expression may not even be a person, but we don't really
know who that real person is, and that's what I think the
damage is.
COMMISSIONER DICKINSON: You have had testimony,
and I think we note from our own records that a number of
Native American tribes are seeking to register marks that
include their names and other insignia for various services,
for example, and probably most prominently recently gaming.
Do you have a concern about that relative to the context of
your testimony?
PROFESSOR STAUROWSKY: No, again, my testimony is
really limited very much to educational institutions. I
haven't studied that issue.
COMMISSIONER DICKINSON: One of the other concerns
that was raised during the hearings so far was if we created
a registry of official insignia, if I read your testimony
correctly, you would take a very broad definition of
official insignia to include the name of a tribe, for
example, would be, I think, within your definition or
individual elements of design perhaps. Could you suggest a
mechanism for us of how to approach the problem that we see
in a lot of our registrations of conflicts when one tribe
would seek to register an element that another tribe also
felt was an element of their cultural heritage, was part of
their official insignia?
PROFESSOR STAUROWSKY: Again I think that's
something that needs to be determined by the Native American
community and discussed between those two entities.
COMMISSIONER DICKINSON: Okay. Thanks.
PROFESSOR STAUROWSKY: Thank you.
8. MICHAEL D. HOBBS, JR.
MS. MARSH: Our next speaker is Michael Hobbs,
attorney for Mohawk Carpet Corporation.
MR. HOBBS: Good morning. My name is Michael
Hobbs, and actually I am a member of the law firm of
Troutman Sanders on behalf of Mohawk Carpet Corporation.
I'm deeply honored to be here on behalf of myself, my firm,
and our client.
I prepared a rather lengthy, actually, submission
for written testimony, and rather than read it--I noted that
it's a windowless room, but I don't want to send people
fleeing for windows to jump out of if I bore them and try to
read this, plus I'm not sure how the read a footnote, quite
frankly.
So in any event, what I've done and what I'd like
to do is to first of all request that my written testimony
be read into the record verbatim, and then, secondly, what
I'd like to do is two things, first of all to hit the high
notes in terms of what I think are the pertinent testimony
here. Secondly, I've heard some questions that have been
posed by the panel in terms of as you're wrestling with
this, what do you do, how do you enact this, and then lastly
to answer any questions that you've got.
If in the course of addressing something, a
question pops in your mind, please feel free to interrupt.
I view this as a dialogue as well, and if you're wrestling
at something, at the end of the day, you're going to have to
submit a report on this.
So on behalf of, again, myself, my client, and my
firm, we've examined this issue to which a public comment
has been requested, and as a preliminary statement, I think
I echo what's been said in terms of we are absolutely,
positively, unequivocally in favor of protecting
intellectual property of Native American tribes. I think
that goes without saying, and I just wanted to repeat it
though, because I think that's fundamental in terms of what
we're trying to achieve here; though when I listen in terms
of the Chickasaw Chips, how do you stop that? What do you
do in terms of that? I think all of us say that's wrong,
that shouldn't be done, but then how do you deal with that
within the fundamental foundations of trademark law?
I'm an intellectual property lawyer. That's the
fundamental basis in which I deal with these issues. Having
wrestled with that question and examined it, we would
propose three things, that first of all in examining the
current Lanham Act, we believe it's adequate, that it may
need some tweaking, it may need some modification in terms
of practice, but the actual Lanham Act, particularly the
provisions 2(a), 2(d), we believe are significant and
sufficient to protect Native American tribal rights.
The second aspect is we're significantly concerned
that if there's a loose or a vague definition in terms of
official insignia, then it could cause staggering impact and
the repercussions that, frankly, you all are going to have
deal with, I'm going to have to deal with, the public is
going to have to deal with, and Native American tribes are
going to have to deal with. It's a significant concern.
The last point we've got is I, frankly, I'm not an
Indian rights expert. The issue of Indian sovereignty, I am
completely out of my league. I can't issue and address
that. That seems to me to be a fundamental concern in terms
of the issues you're addressing. I think our point is,
though, that if there is an amendment after the hearings
you've been to, the written testimony, the recommendations,
yes, something needs to be done. The current Lanham Act
doesn't actively and doesn't sufficiently protect Native
American tribal rights. I think we would say that it is
being protected, but again we defer to your judgment in
terms of that; but if it's to be changed, our view is a very
narrow modification is in order, and we believe that on that
narrow modification, Native American tribal rights will be
adequately protected.
In going through this and listening to the
testimony, I actually had a question for the group. How
many of you all are intellectual property attorneys? Just
raise your hand. Okay. About half a group. It seems to me
that in listening to the questions and listening to the
testimony that part of the issue that people have a concern
with is perhaps not knowing exactly how the process works in
terms of how a trademark gets examined, and if I could
digress for about two minutes just to go over that, because
I'm just impressed with the group that is here today in
terms of the representation, the knowledge, and just the
information that everyone has.
But as an intellectual property practitioner, I've
got a little narrow bit of information that I'd like to
share, and that is as follows: If I represent the Coca Cola
Company, one of Atlanta's trademarks, which I don't, but if
I did, I'd file a trademark in the Patent and Trademark
Office for Coca Cola, it's out of my hands. It goes to the
Patent and Trademark Office. An examiner gets it on his or
her desk and then goes through and makes several
determinations. First of all, they go through and
say is there another existing registration or prior
application that has prior rights and it's confusingly
similar, the likelihood of confusion. There's a test called
the Dupont Test that's a 13-factor test. An examiner will
go through that and say is there likelihood of confusion.
I'm applying for Coca Cola, is Cactus Cola confusingly
similar, and they will go through and make that analysis.
The second analysis they'll make is in terms of is the mark
description. Does it describe the product I want it to
identify and thereby--it was talked about earlier--a
monopoly, does this give me a monopoly to the word computer,
internet? I mean, there are a lot of different words out
there I need to describe in commerce. There are several
other aspects, though, that an examiner will review.
They will review--under 2(a) of the Lanham Act,
they will review and say does this--and there's several
tests. First of all, does it create a deceptive mark, does
it create a false association with another institution, and
then third, is there a disparagement, defamation? And those
are all factors that the Patent and Trademark Office
currently does right now. They make those determinations,
and I think at the outset Ms. Marsh talked about and said,
yes, that is part of it.
I can speak anecdotally. I am very aware as a
practitioner that under 2(a) grounds it doesn't have to be
registered. If it creates one of those three aspects, a
deception, a defamation, a false association with one of
these institutions, the Patent and Trademark Office has to
be aware of it, but if it's an institution, they will reject
it. It is not entitled to federal registration on that
basis, and so--I started out as a teacher, so I had to get
my two minutes in on that.
But with that explanation, having reviewed the
arsenal that's currently before the Patent and Trademark
Office that is at its disposal, our submission is it's
sufficient right now, that if you go through--if you have
Chickasaw Chips, is that deceptive? Do I see that and
think, gosh, I didn't know the Chickasaw Nation was making
potato chips? Yeah, I probably would. I would say, gosh,
you know, this is a new line of business, as you said. That
would be rejected under current Lanham Act law.
The next thing is does it create a geographic
association. If I see something that creates an assumption
that came from an Indian reservation, a Native American
reservation, that would be rejected. If it defames or
creates a scandalous mark, for example the Redskins on the
basis of the most recent TTAB decision, that would be either
rejected, or if the mark has issued, it would be cancelled.
The beauty of all of that, though, is you don't
have to pay a dime to do that. That's what the Patent and
Trademark Office does. They will reject all of these marks
on that basis. Now--
COMMISSIONER DICKINSON: Actually, you have to pay
$245.
MR. HOBBS: But actually, as an institution,
though, if you qualify as an institution--I paid $245 to
register my mark, but there isn't a fee if you're an
institution. So I think what had been alluded to earlier
perhaps is education, that there are, from the counts that
I've seen, various testimony, between 550 and 600 state and
federally-registered or recognized Indian tribes. That is a
significant number. How do you keep up to date on that?
Well, it seems to me that the way to handle that is part of
the education process.
Examining attorneys go through and have regular
education programs. New examining attorneys are given that,
and it seems to me that's part of the process, that there is
an education component that's involved in this. Here are
the tribal official seals of the various Native American
tribes, and that ought to be part of the education process
in terms of it. Do you need to amend the Lanham Act to do
that? No, we would respectfully submit.
Other avenues or arsenal at the disposal of the
Patent and Trademark Office to deny a registration are 2(d).
Is there a likelihood of confusion? We ran a search of the
records of the Patent and Trademark Office, and it appears
to us there are about 200 pending applications, existing
registrations that are in the name of Native American
tribes. So it's being used to a certain extent. Part of it
may be a lack of awareness in terms of its existence. Part
of it may be a barrier in terms of cost, but it is a very
real avenue in terms of 2(d).
Some other avenues that are out there that I
haven't heard discussed are currently there are the Indian
Arts and Craft Act. It provides a very real barrier to use
of a mark in association with goods or services but also in
terms of registration, that pursuant to Sections 1 and 45 of
the Lanham Act, you can't register a mark if it's an illegal
mark, if it breaks the law. That provides another avenue in
terms of that.
In sum, in terms of preserving the status quo, the
concern I have, my client has, that trademark petitioners I
have talked to is the Lanham Act is sacred. It should not
be amended unless there is something significantly wrong
with it. It earlier was talked about the Copyright Act.
The Copyright Act is amended every two years. I mean, there
are 100 different versions of it. If I want to figure out
the links of copyright for one of my client's works, I have
to go to a chart to try to figure it out.
The Lanham Act simply is not amended without
careful study. It is rarely amended, and we would support
that. If it isn't broke, don't fix it, and is it working
now to its current effect? I'm not sure I can answer that.
I went through and tried to find an official Indian tribal
seal that had been registered by someone or incorporated as
part of a mark. I couldn't find one, but is there one? I
can't answer that.
But it appears to me that with the adjustment of
education, of examining terms you're aware of, these are
official Native American tribal seals, and that can be
submitted to the Patent and Trademark Office. That's part
of the education process, and we would submit that's
sufficient.
The concern we've got is that if there's a loose
definition of official insignia--frankly, I don't know what
official insignia means. I went to the dictionary, and I
don't think that provides guidance. I couldn't find it in
the Lanham Act. So the concern I've got if you use the
definition official insignia, you're opening the flood gates
to a whole rash of new litigation, cancellation actions.
What does this mean? No one knows what that means.
So our concern is that doesn't just damage
trademark owners. Clearly, it potentially does, and the
reason for it, sometimes if it damages a trademark owner
that has tried to usurp the rights of a Native American
tribe illegally, that's wrong, clearly, but what's happened
is if you look in the geographic history of the United
States, there are a lot of geographic terms that are the
same as Native American tribes: Iowa, Miami. Nantucket is
a Native American word. So given the geographic history of
our country, for better, for worse, a lot of these
geographic terms have been adopted as part of trademarks.
If I am part of the NBA, and I see Miami Heat,
that is a name referring to the city and geographic location
in southern Miami, not to the Native American Miami tribe.
No ill intent, I don't think, on anyone's behalf in terms of
that, but it exists. If the word alone, Miami, is a
designated definition of official insignia, well, then what
do you do on that? I don't know. What if a Native American-
-say a cultural heritage, a lacrosse stick, for example, is
registered or listed as an official insignia, well, does
that mean that you can't have the sword of lacrosse anymore
unless you have a license from the Native American tribe?
What if you have several Indian tribes incorporate
the same word? The Cherokee tribe, there's several
different branches of that. Does one have to obtain a
license from the other tribe to use that? I don't know the
answer to that, and that seems to me fundamentally troubling
in terms of the definition of an official insignia.
You look puzzled.
COMMISSIONER DICKINSON: Cross-licensing is a
fairly standard practice in your industry. I don't
understand why that is confusing and/or troubling.
MR. HOBBS: The explanation for that is I know how
much effort and time and energy goes into a cross-license,
and it's certainly an ideal situation if you have a cross-
license, but I've had situations where I couldn't cross-
license, and unfortunately we ended up in litigation over
it. So you're right, absolutely.
That's how it could be resolved, but what we would propose
is that if after the testimony, the Patent and Trademark
Office says yes, we are going the recommend that a change is
made, it is not being adequately--American Indian tribal
insignia are not being adequately protected, our proposal is
let's take the foundational, fundamental statutory
guidelines of the act, and let's tweak it, that if you go to
Section 2(b), there is already a protection for states,
United States, and also for municipalities.
Add the words in, and you can determine--I'm,
again, not an expert in terms of Native American law, but
"federally-recognized, state recognized Native American
tribes". There's a body of case law out there that
interprets 2(b), and I know what that means. I know that if
it is merely a name, that's not protected by 2(b). If it is
a lacrosse stick, that's not protected, but if I take that
seal, that's not entitled to registration.
So that would be our submission in terms of what
we would recommend, that if--again, we submit 2(A) is more
than sufficient. 2(d) is more than sufficient with perhaps
some tweaking, but, again, if something is needed, it would
be on that limit basis to prevent the difficulty of defining
official insignia which I have tried to do and I cannot.
Thank you very much for the opportunity to speak.
Do you have any questions?
MS. MARSH: Yes. So you would define insignia as
not including just the tribal names, as sort of other
speakers have advocated?
MR. HOBBS: I would. Again, going back to even
the geographic origins, that if I'm the Miami Heat, and
there's a Miami and Native American tribe, there's no ill
intent. I don't think that people think of a Native
American tribe when they hear Miami Heat. It's a basketball
team located in the City of Miami. I think it presents
difficulties in terms of interpretation. Does it seem to me
that is there an ill intent there? I don't think so.
So yes, I would. The definition we would use is
the same definition that's in 2(b), that it has to be and
rise to the level of a flag, coat of arms--it's a little
antiquated term, but seal, or insignia, and as insignia is
defined in 2(b), not overly--again, it has to fit in, and
then also or a substantial similarity which is also in 2(b),
so again, going back to if there are four arrows in the
quiver versus three, that's not an issue. It is--again,
does it consist or comprise of language? A couple
of other--if I could just address a couple other things that
you all had asked about, it seems to me that--actually, I
think several of your questions have been answered. Any
further questions?
COMMISSIONER DICKINSON: We had taken testimony in
Albuquerque, and one of the larger bodies of testimony was
from the Zia Nation, Zia tribe who uses a symbol. It
doesn't show up very well, but it's been the source of
substantial discussion. It's just this piece here at the
top. I asked them what they regarded as their official
insignia, and they regarded just that sun symbol at the top
as their official insignia. Does that trouble you under
your discussion of what constitutes an official insignia?
MR. HOBBS: Well, the one issue I didn't get to
and didn't address is how do you create a list. If you are
going to go with the 2(b), how do you create a list, and the
difficulty I've got is there's no list as far as I can tell
for municipalities. I mean it would be impossible for every-
-I don't believe there's a state list either. I know there
is one under Article Six, T.R. for applications for
international marks, but there is no list for state
municipalities. So do you create a list or not?
The difficulty I've got is if you create a list,
you've got to have an objection mechanism in it, that if you
look under, you know, under the Paris Convention, there's a
objection under that, that the United States has 12 months
to object to that. To offer and say that unilaterally there
can be a list with no sort of oversight and review, that
seems to me to be problematic.
And so to answer your question in terms of that,
I'm not familiar with the facts in the law in terms of--the
facts primarily in terms of the Zia symbol. Is it, in fact,
that they consider it to be theirs? Absolutely. That's
entitled to consideration. It is also--and going to tests
that are put out in 2(a) and 2(b), so is the primary--is the
primary association with the Zia tribe? If the answer is
yes, I think they're entitled to a registration or on the
list. If it's not, that becomes problematic, but I think
you have to have some sort of test what goes on the list and
what doesn't. It seems to me what's established is 2(a) and
2(b).
MS. MARSH: And under 2(b), any simulation of a
native insignia would be barred?
MR. HOBBS: Absolutely. If you used three prongs
coming off the circle for the Zia logo, absolutely, that is-
-again, if it's a similarity thereof, if it calls to mind
the Zia symbol, absolutely. I mean that should be
prohibited.
COMMISSIONER DICKINSON: My understanding is we
don't reject marks that include the maple leaf alone as an
element. My understanding is that we don't reject marks
that consist of a large red circle. Those could conceivably
be considered the insignia of the flag of a foreign country.
Do you see any inconsistency there?
MR. HOBBS: I think the point is well taken. I
think that, again, going back to the tests for 2(a) and
2(b), that it's got to be the primary association has to be
with the nation, with the institution or the foreign nation,
that if I see a maple leaf, do I think of Log Cabin syrup,
do I think of the Toronto Maple Leafs Hockey Club, do I
think of--I think there is such a blurring of that that I
think that those particular indices you've talked about--
now, if I do a red star in a white field in a designation
that resembles a flag or coat of arms, yeah, then I think
that's very problematic; but if I have a red dot, I mean,
there are a lot of red dot trademarks that are out there.
So, again, I think, again, does it--is the primary impact
that calls to mind the institution, the foreign nation, the
owner of that.
COMMISSIONER DICKINSON: Your client, the Mohawk
Carpet Company, have they ever engaged in discussions along
the lines that we've been discussing here today with the
Mohawk Tribe?
MR. HOBBS: They have not. They have not.
COMMISSIONER DICKINSON: Has the Mohawk Tribe ever
raised a concerns that have been raised through this
testimony both here and other places about your use of that
mark?
MR. HOBBS: They have not. The origin of the
Mohawk Carpet Corporation, again, it goes back to the
geographic issues, that the Mohawk Carpet Corporation in the
1920s was founded in the Mohawk River Valley of New York. I
mean, it's a geographic place. That's where it was founded,
and that was the name that the corporation took.
In the 1940s, when labor was cheaper in Georgia
than it was in New York, they moved down to Georgia, and
they've maintained the same name, and so that's the origin
of it. There are--we've done an investigation of it. There
are a significant number of Mohawk uses. Is it our intent
or our client's intent to call or invoke the Mohawk Indian
tribe? No, absolutely not.
AUDIENCE MEMBER: Can I just ask a question?
MR. HOBBS: Yes.
COMMISSIONER DICKINSON: Well, let's hear the
question. Maybe we'll read it into the record.
AUDIENCE MEMBER: Why does Mohawk use an Indian
emblem to sell its product?
MR. HOBBS: My understanding--
COMMISSIONER DICKINSON: The question was--to
repeat for the record, the question is the speaker's
understanding is that the Mohawk Carpet Company uses a
stylized logo of what appears to be a Native American in
their advertising and as their logo. Why is that if they're
intended to be a geographic designation?
MR. HOBBS: I should have clarified to the extent-
-it is historically a geographic designation, and then part
of it lies in the reason for the selection in terms of the
symbol is that as the Patent and Trademark Office well
knows, there is no protection inherently for a geographic
mark. If it's Mohawk Carpet Corporation, does that come
from Mohawk, New York? That's not going to get a
registration from the beginning.
Additionally, Mohawk Carpet Corporation, the
desire was not to be associated with any geographic area.
So in terms of using it, it's not intended to be affiliated
with the Mohawk Indian tribe. It's a stylized symbol of a
Native American boy, and that's the choice. Is it a seal of
the Mohawk Indian tribe? Absolutely not. Have I inquired,
has there been any questions as to affiliation with the
Mohawk Indian tribe? No, and I checked, and I asked in
terms of that. There is not.
Do you believe the Mohawk Carpet Corporation is
affiliated with the Mohawk Indian tribe?
COMMISSIONER DICKINSON: Well, this isn't intended
as colloquy, I'm afraid.
MR. HOBBS: No, I'm just saying that that--to
answer your question specifically, there are various
historical reasons for it. It is an Indian boy, yes, that's
correct, but it's not intended to be any sort of association
with the Mohawk Indian Native American tribe.
COMMISSIONER DICKINSON: One final question. I
noticed in your testimony you got to the question which I
asked the previous witness which was what to do in the case
of conflicts. Can you give us any guidance along that line?
MR. HOBBS: I'm sorry. Conflicts?
COMMISSIONER DICKINSON: Where more than one tribe
has a similar or maybe identical either name or official
insignia.
MR. HOBBS: I think there are a number of ways of
doing it. You had alluded to cross-license. I think that
also there's a potential for a collective mark perhaps, that
is where no one entity owns it but it's put into use so that
several members could use that.
MS. MARSH: Thank you.
9. GARY BROUSE
MS. MARSH: Our next speaker is Gary Brouse from
the Interfaith Center on Corporate Responsibility.
MR. BROUSE: First of all, thank you for letting
me speak here today, and I represent the Interfaith Center
on Corporate Responsibility. The Interfaith Center of
Corporate Responsibility is an organization of religious
institutional shareholders who have investments in
corporations. They represent the Catholic, the Protestant,
and Jewish institutions. We have probably about a $100
billion worth of investment in Corporate America.
I'm very, very honored that I work with this organization.
They have been going through the last several years learning
about this issue, as the corporations have, and to their
credit, they have taken on this issue as an important
investment issue. One thing they would like to convey to
you is that the religious shareholders not only invest in a
corporation for financial returns but also the social
returns. We feel that it can be very expensive when the
company starts to have to shell out money for discrimination
cases and in cases like this where there has been some
challenges about corporate logos and mascots and stuff like
that.
So we go around to the corporations, and we
discuss the issue with them. We have in the last year met
with about 30 corporations. Some of those corporations have
discontinued their advertising, using any kind of emblems or
symbols such as the Cleveland Indians' Chief Wahoo and the
Atlanta Braves. Anheuser Busch just this year went on 60
Minutes and said they will no longer use the Chief Wahoo
issue because of its controversy and it's mean and demeaning
toward Indian people.
My job at the Interfaith Center is I'm the
director of diversity and indigenous issues. What I do for
the religious organization is review corporations'
performance in the workplace on the corporate boards, making
sure that their boards are diverse. If they're not, we
report back to the investors who have shares in that company
or who are considering investing in that company. We want
to make sure that a corporation is having minorities' and
women's input at the highest levels.
We believe this is one of the problems that
corporations fall into when they have a board or an
executive staff that is not completely diverse, that's not
getting the input from the community who they're serving in
their marketplaces. So we consider this tremendously
important.
One of the things that I would like to say is that
especially with the word "Redskin". We talked, and you
heard about the laws that are in place right now. I don't
know how you could say that--I mean, it took this country
this long to learn what "redskin" means. That's a long
time. Now the educational system has failed us on this.
The legal system has failed us on this, and we need to start
to educate, and that's probably one of the weakest points in
all these laws that we're talking about, is that we really
don't know.
I mean, we're hearing testimony here today that a
lot of people are not aware of why these issues are so
important to the Indian community, and I think one of the
things that the PTO can do is to create a greater resource
for gathering information and having this information
available. Another thing I might suggest is to
diversify a little bit more. You did a great job here today
but also to include Indian people in your employment, in
your consultation and research. That's where a lot of
corporations fail. As we talked about these issues with
corporations, we found when we're addressing just the logo
issue in advertising, we found out they were falling down in
other areas such as their diversity training program toward
Indian people. Maybe they didn't have a large Indian
population in their work force, but they were in some way
connected with the Indian community, whether it was through
their advertising, whether it was through their vendor
programs. There was still some connection. So they had a
tremendous weakness there, and we were helping them to
develop that.
What I have put here together for you--maybe I'll
just allude to one thing. I went to an annual meeting of
American Brands when they were American Brands, and the
issue was board diversity. They had no women on there.
They had no minorities on their board at that time. And as
I looked up to make my presentation about the resolution, a
big emblem came down, the corporate logo, and it was the
head of an Indian in full headdress, and all of a sudden my
comments immediately changed, and what I said was that when
I look up on that stage and what we're asking is the board
to diversify, I only see one minority face up there, and
unfortunately it's a caricature of an Indian person.
And this seems to be epidemic in our society
today, what's happening in corporate America. These logos
are themes. They provide an environment in which they're
trying to communicate to public, to their customers, a
certain idea. Unfortunately, that becomes very derogatory
toward Indian people. When that theme came down, that
Indian head, that said to me that they were somehow
diversified even though realistically it wasn't true.
That's what corporations do when they do their advertising.
It is more likely today that you're going to see a
caricature or a logo or a mascot of an Indian person than
you are going to see a real Indian person. You are not
hearing from the Indian community, and that's what's so
unfortunate. Everything that people know about Indian
people today has been through the educational system,
through the media, through advertising, through Corporate
America, but not directly from Indian people.
And I think one of the things I can say is the
great appreciation I have for you is that there are so many
Indian people here to be able to testify on that behalf and
that opportunity hasn't always been there, and it's
unfortunate that it's taken this long.
One of the--this is more of a picture-type
presentation for you to show you that these images mean
much, much more than what a lot of people are indicating.
It's interesting that a lot of these Indian logos and
mascots started after the second World War when a lot of the
propaganda material that was used against Germans and
Japanese then focused on Indian people, and this gives you
an idea of what some of those images look like.
And it's interesting that while we're not seeing
that they are identical, we are seeing there are
similarities between the Nazi's most famous propaganda
against the Jewish people in the Chief Wahoo logo. There
are similarities there. There are exaggerations. They use
the same methods to communicate the images that you see
here.
When you get to our earlier country in our
history, you look at some of the corporations' logo and
advertising, and you see Nigger Head Brands. I don't see
any difference from that than the Chief Wahoo head that we
see today, and I don't understand why people can't make that
connection. We addressed GTE about their ad,
and not only was the Chief Wahoo on the ad, but the only way
to talk tribe was their pitch on this particular ad which we
thought was culturally offensive. We addressed that
corporation about this issue. We went through these issues.
They will no longer use this advertising. They no longer
use the Chief Wahoo in their advertising. There is
the potential that if some corporations retain these logos,
that if they don't change, there's going to be lawsuits,
there's going to be great financial loss to the shareholders
and it's a concern we have.
This is an ad that was on the back of popcorn,
which you can see--I'll read it. "The original All-American
snack food was discovered of course by the original American
Indians, not the Cleveland Indians, the bow and arrow
Indians. It was highly popularized by western movies in
which the cowboys always got the girl, the land, the ponies,
and all the Indians got was maize. For a complete
satisfaction, the eater should face the happy hunting ground
and mutter an original prayer of thanks to Pohohantas and
Sitting Bull, then buy another bag of exploded maize. To
eat plain ole popcorn would be a failure to recognize our
nation's debt to the Indians and constitute a grossly
unpatriotic act and participate in Indian uprisings."
I put together just samples of some of the
material that we have seen that corporations have put out.
We've written to about 400 corporations about these issues.
This is some of the responses. Sears has indicated their
decisions are made by their customer demands. We were
asking about the sports logos that they sold and their
fabrics and their advertising that they use, and this is
their response to us. They're putting their responsibility
off on someone else here, their customers.
This is a letter from GTE that, as you can see, is
a response to the ad and them changing their methods. Wal-
Mart, here is a response. Now, Wal-Mart has some problems,
not only with the logos of selling them but also in their
work force in which they deal with Indian people. They have
a lot of stores on the reservations, but they employ very
little Indian people. They also violate a lot of sacred
sites among Indian people. This is all the lack of
knowledge and education on their part of knowing what really
is the problem. They failed to meet with us and discuss
these issues.
Another thing Wal-Mart does is they take their
theme into our school systems. They bought a whole marching
band uniform of Indian regalia, including full headdress for
this band, passing on this stereotype, this racism that
exists about Indian people. So these are penetrating.
These corporate logos are penetrating into our school
systems. They use the words like the Washington Redskins
just like everybody else.
Here's another example of some of the ads, Chief
Crunchy which has been seen in a lot of school cafeterias.
The J.C. Penney ad is of Crazy Horse fashions which we've
been having discussions with. I think one of the concerns
here is that the conversations that J.C. Penney and Liz
Claiborne has had has had direct contact with the Crazy
Horse estate and the descendants of Crazy Horse. After
those discussions and the survey that they're about to do,
without telling us, even though we were having these
discussions, had decided now to expand the Crazy Horse
fashions for men.
And then just an example of the Mohawk Carpeting.
The last one is from Phillip Morris, Miller Brewing Company
which is also another company which has stated that they
will no longer use these symbols in their advertising.
I think one of the greatest disappointments is to
see two of your leading heroes, and it's surprising when you
put people in one situation and then sit them in another one
to see how awful it looks to have two African Americans in
front of the Chief Wahoo logo. It really tells a story.
I think that a lot has been said today here about
what the cost is going to be to the corporation if there's
some additional laws around these issues, but I think really
what we should be asking ourselves is the debt that the
American Indian people have had to pay all these years of
not being recognized, and I think it's about time to start
being concerned about their feelings and their concerns and
hearing them out.
One of the reasons why some of these trademarks
are not licensed or are not applied for--you're going to
hear later from an attorney that will give you a better
explanation than I can, but some of it is that there is a
religious belief against doing those kind of things. There
should be something in our laws that our laws would protect
without Indian people having to jeopardize their own
religious beliefs to protect. There's a certain
responsibility I think this government has as a sovereign
nation to a sovereign nation, and maybe we should start to
be looking into those, of ways of how to protect the Indian
people in that respect.
I think one--like I said before was that we need
greater research. I think one of the things you can take
advantage of, the New York State Educational system is
carrying on a research of the issue of Indian logos within
the school systems in the State of New York, and that's
being conducted by the commissioner of education in New York
State, and I don't think that report has been finished yet,
but I recommend that when it is, that you get a copy of that
report for future benefit. I thank you very much.
MS. MARSH: This isn't as much a question as a
comment. I feel compelled to defend the Trademark Office.
We doubled the size of our professional staff in the last
two years because of our increased workload, and I think we
hired an extremely diverse group of people. Debbie and Todd
may know more about that than I do. And the attorney that
we have assigned to the Native American marks has a strong
link to the Native American community. She is actually in
the audience today, Kathy DeYoung.
MR. BROUSE: Hi.
MS. MARSH: Do you have any questions?
COMMISSIONER DICKINSON: Thank you for your
testimony. It's very valuable and I think brings home for
us in many ways how we need to be very scrupulous as we
undertake our 2(a) responsibilities.
I think that the recent decision we had in the
Redskins matter, I think is reflective of I, think, where
the office is at this point in a lot of these issues. So I
think hopefully that decision was one which met with support
in the Native American community and was hopefully one which
the Native American community felt was being heard at the
Patent and Trademark Office.
MR. BROUSE: I would just like to comment on that
because one thing I can say is that, yes, that has gotten
support within the community, but surprisingly it has also
gotten some support from within the corporations, and I can
tell you that to be in contact with persons like Francine
Katz at Anheuser Busch and Tre Parris at Coca Cola, because
one of the things that they said that was very helpful to
them, it relieved them. They then had something to go to
the rest of the company, to their marketing people, and
said, you know, we should be doing this.
There's been turmoil within the corporations about
what they should be doing, and they're always fighting with
their marketing people, and they're always looking for
information to benefit in the argument. They understand it
here, but intellectually, you know, putting that information
out.
So when PTO came out with that decision, it really
lifted a great burden within a lot of the corporations and
instantly made changes within their policies, almost
immediately within those companies, and as far as the
comment about diversity is, I was complimenting, and this is
something I do at every corporation. We don't have American
Indians sitting on corporate boards, and we need to have
more input from the Indian community on that.
I think one of the things that I might point out
is the past history here is that what's so discouraging
within the community is that you had a presidential
commission on race which had no Indian representation on
that. You had a glass ceiling commission with 21
commissioners looking into the glass ceiling in Corporate
America, no one from the Indian community out of 21
commissions. There was never in the past been an Indian
person who has sat on the commission for civil rights.
You see all these national debates going on about
affirmative action that's going on in this country. You
don't see representatives from the Indian country coming in
there and participating. You don't know what the impact is
going to be on these decisions. So we're looking at the
whole national picture here, and there's just no input. And
this is one of the bright points for the Indian community to
see, that there is a government agency actually doing
something that seems to be benefitting the Indian people.
So I just want to make sure that you understand
that that is a compliment, and we are grateful for that.
Thank you.
10. MICHAEL HAINE
MS. MARSH: Our next speaker is Michael Haine.
MR. HAINE: Good morning. My name is Michael
Haine, and I am the director of the National Coalition on
Racism in Sports and Media. We are a coalition of 48
different national human and civil rights organizations,
advocacy groups, ranging all the way from the National
Congress of American Indians to the Nation of Islam, NAACP,
the Urban League, and sort of an array of who's who in the
area of human rights, and we've been--we were formed in 1992
just for the purpose of protecting our images.
I'm also a Seminole. I'm half Sioux and half
Seminole, but I'm a vice chairman of my nation, Seminole
nation, and so I'm half Sioux and half Seminole. I've got a
little bit of white blood in me too, but I can't prove it.
I know that's a big deal here in Washington, but I'm very
happy to be here.
I represent a lot of tribal governments in
Oklahoma, and our Indian nations in Oklahoma consist of 39
federally-recognized tribes in the State of Oklahoma. We
range all the way from Comanches, some from New York,
Delaware, some Pennsylvania and around here to from
California, and it seems that a lot of the tribal
governments that declared war against the United States
ended up in Oklahoma like one big concentration camp.
When they moved my people and the five tribes, what they
call the five civilized tribes from the southeastern part of
the United States, into what's now Oklahoma, what they call
under the Removal Act, and that brings me to my first point,
is that as tribal governments, we're really concerned about
the impact of images on our youth. As a grandparent, as an
elected leader, as a community leader, and as an educator,
I'm concerned about the use of your images in colleges,
universities, institutions of higher education, and in our
secondary and elementary schools throughout the nation.
And just as I'd heard that why have you Indians
waited so long to come and object--I hear that all the time.
Why did you wait so long? Like the Cleveland baseball team,
they tell us that or the Atlanta baseball team. How come
you guys waited until we were winning to come out here and
protest, you know, and as it's just recently we've gained
some political power. It's just recently that the president
has signed into executive order a law mandating a government-
to-government relationship. To me that would help you
clarify your insignias, you know, your seals, because that
is a law now.
There's an executive order that we should be
treated as a government, and that brings me to the Mohawk
Carpet issue. Maybe the University of Illinois, the Florida
State appropriating tribal names. We have treaties with the
federal government that predates any of these guys, any of
these corporations, legal binding documents. There was no
other Mohawks around when those treaties were signed. There
was no other Seminoles around when that--when these things
were signed, way before Florida State University.
I want to tell your a problem I have with that
group down there. You know, I'm a Seminole Indian. We have
beautiful--have you seen the patchwork jackets Seminoles
have? They're indigenous and unique just to my people. We
had a woman that was at Florida State University in the
plaza right there selling chances on a jacket. She had the
word Seminole on the back, and that goes to the arts and
crafts. I'm glad someone brought up the arts and crafts
bill. It's related.
And she was escorted off the university grounds
because the word Seminole, the university security said that
violated their patent, Florida State University's patent on
the word Seminole. My tribe. I'm a Seminole, not them, and
they escorted one of my elders off very unceremoniously,
very disrespectfully because they have a patent and that's
wrong. That's wrong that they could do that to my people.
That's wrong that they could appropriate my name or regalia.
And their band outfit has patchwork now, their
band, and to me that's an appropriation of our traditional
cultural properties, national cultural properties that we've-
-that's included in our religious freedom protections,
including in what they call Naive American Grant Protection
and Appropriation Act included in the National Historic
Preservation Act.
Those are related in the fiduciary responsibility
of this government's trust responsibility to my people as
indicated by those legal and political documents you would
call treaties. They are still enforceable documents. The
Supreme Court continually reaffirms that concept, and I
don't like it that we have to go to--I've been arrested 43
times in exercising our First Amendment right to protest
against the use of our names and images.
When the Cleveland baseball team played the
Atlanta Braves down in Atlanta, to me that was a largest
exhibition of cultural cross-dressing in this nation's
history, and the other thing, all the people walked ar