Jul 8, 2015
Legal Look: Redskins trademark registrations
A Federal Judge has upheld a decision by the United States Patent and Trademarks Office (USPTO) to cancel six Washington Redskins trademark registrations on the basis that they are "disparaging to Native Americans". As TSN legal analyst Eric Macramalla explains, the ruling doesn't mean that the club has lost all of its rights to the logo or name "Redskins" - yet.
A Federal Judge has upheld a decision by the United States Patent and Trademarks Office (USPTO) to cancel six Washington Redskins trademark registrations on the basis that they are "disparaging to Native Americans".
Five Native Americans initiated the cancellation proceeding pursuant to the U.S. Trademarks Act, which "prohibits registration of marks that may disparage persons or bring them into contempt or disrepute." They were successful, and U.S. District Judge Gerald Bruce Lee agreed that the marks were indeed offensive.
There has been some talk that the registrations have been cancelled, that the Redskins have lost all their trademark protection and that anyone can now go out and start selling Redskins merchandise without the permission of the team.
All that is wrong.
Trademark Registrations Active Pending Appeal
First off, the trademark registrations have not been cancelled as of yet. The Redskins will appeal, and pending appeal, the marks will remain in good standing.
The Redskins Will Still Have Trademark Rights
On to the big issue: does the cancellation mean that the Redskins don't have trademark rights?
The ruling to cancel the trademark registrations does NOT strip the team of its trademark rights or its ability to stop unauthorized parties from using the Redskins marks.
The Redskins have acquired what are called common law trademark rights. These are trademark rights that arise by virtue of the use of the mark in the marketplace. By "use", I mean things like jersey sales and the mark appearing in TV broadcasts and online.
And here's the key: common law trademark rights are enforceable and the Redskins could rely on them to stop a third party from making unauthorized use of its marks.
This means that the team does not need a trademark registration to stop someone from making unauthorized use of its marks. Common law rights can be relied upon to do just that. While there are important differences between registered and common law trademarks as far as scope of protection, the fame of the Redskins mark together with national sales and use place the Redskins in a good position to stop others from using their marks. Trademark registrations make enforcement easier but common law rights are also enforceable.
So if some guy in Miami starts selling product with the Redskins trademark on it without the permission of the team, he should expect to receive a cease and desist letter from the team, and failing his agreement to stop, he could face a lawsuit.
Copyright Infringement
Apart from trademarks, the Redskins could also sue for copyright infringement if someone makes unauthorized use of their logo or stylized word mark. The decision of the USPTO relates only to trademarks and has nothing to do with copyright.
What's Next
While the potential cancellation is not fatal to the ability of the Redskins to enforce their rights, this is yet another blow to the Redskins team name. The pressure on the team and league to change its name continues to mount with no end in sight. Ultimately, expect the name to change. Just not right away.