written by James Klobucar, Esq., Patent Attorney at Gearhart Law
As many have likely now heard, the United States Patent & Trademark Office (USPTO), namely the Trademark Trial and Appeal Board (TTAB), has canceled six trademark registrations owned by Pro-Football, Inc. and attributable to the “Washington Redskins” American football team of the National Football League (NFL). Each of the canceled trademarks bore the word “redskin” or some derivative in each of the trademarks.
Is this really a landmark decision as is being lauded by the media?
Firstly, it is important to note that this fight has been fought before. In 1999, the Trademark Trial and Appeal Board (TTAB) canceled six trademark registrations, the same registrations that were just recently canceled. However, this cancellation was overturned on appeal by a federal court over a decade later. The appeal ruling was returned in Pro-Football, Inc.’s favor because it was determined the individuals, or plaintiffs, who initiated the case waited too long to do so.
The case, in this instance, hinges on two main legal principles: 1) whether the meaning of the word disparaged a substantial composite (which is not a majority) of Native Americans at the time the trademarks were registered and 2) whether the affirmative defense of laches, or an unreasonable delay in pursuing a claim, applies to the plaintiffs in this case. Note, the laches defense asserted by Pro-Football, Inc. was the legal technicality that caused the federal court to overturn the cancellation by the TTAB in the prior case noted above. This time around, in a split decision (2-1), the TTAB found that the meaning of the word disparaged a substantial composite of Native Americans at the time of registration and that the affirmative defense of laches does not apply to the current plaintiffs.
However, before you take to the streets and start printing and selling your “Washington Redskins” team gear, you would be wise to take the below into consideration.
As previously noted, this fight has been fought before. In 1999, the Trademark Trial and Appeal Board (TTAB) canceled the same registrations. The case was appealed and that appeal process took over a decade before the cancellation was overturned by a federal court. Throughout the entire time the case was on appeal, the federal registration for the trademarks remained in full force. The trademark attorney for the Washington Redskins has already stated that the team will appeal this new ruling, and during this new appeal process, the trademarks will, once again, remain in full force.
Additionally, the cancellations are only directed to any trademark that uses the word “redskin” or any other derivatives. It in no way affects the team’s ability to use their logo or team name in any setting. Thus, the logo is and still will be protected under a federal trademark registration. The team can and will, barring any decision by team owner Dan Snyder, retain the team name and logo and be able to do so with no legal consequences.
In turn, even with the cancelation, the Washington Redskins can still attempt to enforce their exclusivity to the trademark under federal law per §43(a) of the Lanham Act. Even further, if hypothetically, the appeal is filed and the cancellations are upheld, Pro-Football, Inc. would still possess common law trademark rights, which are distinct from federal trademark rights. There are a number of benefits to having a federal registration attributable to a trademark, including but not limited to, a legal presumption of ownership of the mark and the ability to bring an infringement action in federal court seeking statutory damages.
However, absent such federal registrations, a trademark can still exist under common law regardless of the nature of the trademark. These common law rights provide for trademark rights within a certain territory based on a priority of use of the trademark(s) within that territory. It is incontrovertible as to the nature of the association between the trademarks currently owned by the Washington Redskins and the NFL and their territory of use in commerce. Regardless of the outcome of the appeal, the Washington Redskins and the NFL will be able to use the marks, under federal or common law rights, in commerce and prevent others from doing the same.
Thus, any sports fan or an individual who devises a “get rich quick” scheme or otherwise decides to produce and sell “Washington Redskins” gear without obtaining advance permission from the team, may create a false representation that it originated from the organization. That individual may subsequently be found to be in violation of improperly benefiting from the use of the trademark protected under at least common law and be forced to pay any and all damages related to their infringing use.
The morals, ethics, and so forth of the team name will continue to be debated and is a much murkier subject with no one answer. What is clear, though, is that the Washington Redskins will likely maintain their federal registrations for years to come (assuming they appeal the ruling), and even if lost, the team will still likely be able to prevent other uses of their trademarks under at least their common law rights. To answer the question: Is this really a landmark decision as is being lauded by the media? Hardly.
Read the full opinion here: