The Washington Redskins are no more, at least as far as the U.S. Patent & Trademark Office is concerned. In a second decision issued by the Trademark Trial & Appeals Board (TTAB), the Board declared that the trademark registrations for the Redskins franchise should be canceled because all six marks are "disparaging" to Native Americans. This is yet another step in a long legal process. The TTAB's first decision to cancel the registrations was way back in 1999, which is long enough ago (barely) that I studied it in law school. The 1999 decision was overturned on a technicality in the federal court system.
The decision is important to the NFL and its Washington franchise for several reasons. First, a trademark registration over 5 years old carries certain presumptions, including that it is valid, protectable, and insulated from most legal challenges. A registration punches the trademark owner's ticket into federal court anywhere in the country the owner needs to shut down someone unlawfully using the mark (especially for trademarks on a nationwide product like the NFL). A trademark registration also prevents any other person from getting a confusingly similar trademark at the Trademark Office. And, the trademark owner gets to use the ® symbol on its products.
However, in order to get a trademark registration, the trademark owner must comply with certain legal requirements. For instance, you can't get a trademark on the following things:
- anything immoral, deceptive, scandalous, disparaging (e.g., swear words, the Redskins name);
- wrongfully suggests an association with a person, groups, beliefs, or national symbols;
- contains a flag of the U.S., a state, or a foreign country;
- wrongfully suggests a geographic association with a product (e.g., Champagne is from France);
- contains the name, portrait, or signature of a living person or a dead president while his widow is still living;
- anything descriptive, mis-descriptive, or generic about a product or service; and
- anything likely to be confused with a previously-registered trademark that is still active.
As you can see, there are many pitfalls for the unwary in applying for trademark registrations.
Now that the Redskins registrations have been canceled, the team can still elect to use the Redskins name, and it will continue to have common law trademark rights to the names. Trademark rights arise out of use, not registration, and simply by using a mark in commerce one acquires common law trademark rights. However, if the team or the NFL wants to enforce the Redskins common law trademarks, it faces additional hurdles in doing so — like proving it owns a valid trademark registration. That won't be terribly difficult for the NFL, but that type of burden is more difficult for a smaller business on a tight budget with a shorter period of use.
Trademarks are your brand, your public identity. Brands need to be well planned and protected. I've been a trademark lawyer for a decade. I've helped scores of clients vet hundreds of potential brand names, and I've obtained many a trademark registration. If you need help protecting your brand, please give me a call.