April L. Besl
Publications

Redskins’ trademark decision ushers in more questions

June 23, 2014Articles

The Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO) most likely knew it was going to generate headlines Wednesday when it issued a monumental decision to cancel six registrations of the Washington Redskins. The main lesson to be learned from this ruling is not necessarily from the decision itself, but from the public perception of the decision, and the impact it will have on the Washington Redskins and its trademark rights going forward. The TTAB canceled the trademark because it found that the Redskins mark is a scandalous or immoral mark, which, under the Lanham Act (the federal trademark statute) is grounds upon which registration can be refused or canceled.

Within minutes of the decision, many news outlets reported that the “Patent Office” (a misnomer – the correct nomenclature is the Trademark Trial and Appeal Board at the United States Patent and Trademark Office, or the “Trademark Office” for shorthand) had terminated “the trademark” of the Washington Redskins, but this is not accurate.

The decision by the TTAB in no way stripped the Washington Redskins of its trademark rights entirely. The USPTO operates in a parallel universe from the “real world” marketplace, and the Trademark Office cannot force any party to stop using its – or any other party’s mark. The authority of the Trademark Office and TTAB is limited to the determination as to whether a party can own a registration for a particular mark, not whether or not a party can use a mark, and not whether or not a party has enforceable trademark rights.

In order for the Washington Redskins (or any other party) to be forced to stop using its mark, someone would have to take the case to a court, most likely federal court. Only after the court issues an injunction against the Washington Redskins, would the franchise be forced to stop using the Redskins trademark. But what does that mean in the real world?

Even with its trademark registrations cancelled, the Washington Redskins still own strong and enforceable federal rights in its trademark as a “common law trademark” recognized and validated under the Lanham Act. These common law rights arise the moment a person or entity begins using a word, symbol, phrase, or design, as a source identifier in commerce. Without a doubt, common law trademarks can be the basis for lawsuits or other enforcement actions to prevent or stop infringement, halt domain name misuse, and serve as the basis for takedowns of infringing web pages. While common law rights are limited to the geography in which the owner uses the mark, it’s clear that in this case that the Washington Redskins franchise has established trademark use of the Redskins mark throughout the country.

This is not to say that there is no downside to the Washington Redskins as a result of this decision. If a suit is filed challenging the team’s right to use the Redskins mark, the lack of any federal registration for the Redskins mark would shift the burden of proof. Because of the ruling, the franchise would have to establish that is has a common law trademark that is enforceable. However, given the longstanding use and renown, as well as robust licensing activities associated with the Redskins mark, this would appear to be a minor hurdle for the team.

However, the lack of any federal registrations for the Redskins mark does have an impact on the franchises’ enforcement options when it comes to battling counterfeit items. A federally registered trademark can be recorded with U.S. Customs, and any goods that are imported bearing the registered mark that were not authorized by the trademark owner will be seized as counterfeits. Owners can still go to court to enforce against counterfeits on the basis of common law rights, but they lose the benefit of independent action by U.S. Customs. In addition, the lack of a federal registration does curtail the ability of a trademark owner to seek an ex parte seizure of counterfeit goods, and limits the availability of certain enhanced damages under the Lanham Act. Given these negative consequences, it is no surprise that the franchise has indicated they intend to appeal the decision of the TTAB to the Federal Circuit Court.

A court challenge to the team’s right to continue to use the Redskins trademark may assert that there are no enforceable trademark rights in the Redskins mark on the same grounds on which the registrations were canceled – namely, that the mark is “disparaging” to Native Americans. However, the Lanham Act’s prohibition on registration of “disparaging” or “scandalous” marks is specific to registration.

The statute is clear that “disparagement” is specific grounds upon which the Trademark Office can refuse registration. Nowhere does the statute state that “disparagement” is grounds for declaring established common law trademark rights null and void. Indeed, given that this language concerning disparagement is specific as to registration, it is questionable whether litigation would stand against the Washington Redskins, seeking to force the franchise to cease use of the Redskins mark.

The decision itself also highlights the interesting dynamic of evolving public opinion and the connotation of certain words and phrases. The decision provides a thorough examination of whether the term “Redskins” was offensive at the time of registration. However, it is worth noting that the court of public opinion, especially on social media and the web appears divided. Some commentators have suggested that, regardless of the outcome of any appeal, the Washington Redskins should change their name in response to the mounting public outrage. Others have taken the opposite view. They say although the term “redskins” may have been offensive in its origins, in the past two decades, the term is primarily recognized as the name and trademark of a well known football franchise, and as such, no longer carries with it negative connotations.

Regardless of how this matter is ultimately decided, it showcases an evolving world in which trademark owners need to be cognizant of words and phrases that were once, or could still be, considered offensive. In today’s 24 hour news cycle and with large scale public commentary on social media, public perception can turn on a dime, and brand owners, whether nascent or established, need to choose carefully when developing their brand identity.