22 June, 2014

Thoughts on the Cancelled Washington Redskins' Trademarks

After having discussed what is inappropriate in trademarks a few months ago, the topic has since emerged in the global trademarks discussion after an update regarding the often debated Washington Redskins mark emerged. The discussion has largely focused on the reasoning of the US Trademark Trial and Appeal Board, and has yielded a certain level of hyperbole and misinformation regarding the mark and trademarks in general. It is because of this this humble writer thought it would be appropriate to expand more on what has happened and what the decision's impact truly is.

In the decision issued a few days ago, the TTAB cancelled the trademark "REDSKINS" (and five other marks) as a result of an appeal proceeding brought over by several Native American appellants who argued that the mark was disparaging to Native Americans, violating 15 USC 1052. The court found that at least 1/3 of Native Americans found the mark disparaging, satisfying the requirement under section 1052. As such the marks were cancelled; however this is not the end of the matter entirely.

Even after the mark has been cancelled the organization retains the rights in the marks during any appeal processes; something which Bob Raskopf, the trademark lawyer for the Redskins, has indicated they will do. Outside of the marks' registration the organization will still enjoy ample protection under both common law and federal legislation. Under 15 USC 1125 any person using of a mark to confuse the consumer as to its origins or quality, causing damage to the original user of that mark, can be held liable under the provision for damages resulting from that use. As such the Redskins could easily prevent the use of its mark even if their marks are cancelled. Under common law a mark is protectable through its use, or as was stated by Justice Pitney in United Drug Co v Theodore Rectans Co: "...the right to a particular mark grows out of its use, not its mere adoption; its function is simply to designate the goods as the product of a particular trader and to protect his good will against the sale of another's product as his". Through their extensive use of the Redskins mark since the team's beginnings in the 1930s, the team can protect the mark even outside of federal registration. This is highly important, and often forgotten.

A less offensive alternative?
It was however pointed out by Richard Biagi, a partner at a US intellectual property law firm, that: "[o]ne interesting twist is that owning a trademark registration is a requirement by Department of Homeland Security/US Customs in order to impound counterfeit goods entering the  US... So, it is possible that an overseas manufacturer of knock-off apparel or souvenirs bearing the REDSKINS mark could get their products through customs without any trouble – however, that still doesn't prohibit the NFL from suing the manufacturer for trademark infringement". A minor quibble, but worth mentioning in conjunction with the case.

As one can see the effects the decision potentially will have are minimal, at least in terms of the marks protection. The mark will be very much alive and worth protecting; however the negative perception of the mark and the team could damage its monetary worth. In addition 50 US Senators have put some pressure on the team to change its name in a recent letter to the NFL Commissioner Roger Goddell, further exasperating the team's current situation. The decision is symbolic at best, and it is still very likely it will be overturned on appeal.

The discussion surrounding the events has been lively, and has brought trademarks and their worth more into the consciousness of the general populous; yet the discussion has been riddled with inaccuracies as to the mark and its future and over its protectability as a result. Hopefully this article has cleared things up for some, and this writer for one will await the results of the forthcoming appeals process.

Source: Washington Post

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