Monday, July 28, 2014

The Redskins just lost some legal protection of their name. Here's what it means

Redskins owner Daniel Synder Patrick McDermott/Getty Images

On Wednesday, the United States Patent and Trademark Office cancelled several trademark registrations owned by the Washington Redskins football team, according to ThinkProgress.

This means that, if the cancellation is upheld upon appeal, the team could lose some legal protection of its controversial name. The team wouldn't lose the actual trademarks — just the trademark registrations — but that might make it tougher for them to stop people from manufacturing and selling "Washington Redskins" T-shirts and hats (more on that below).

Perhaps the biggest part of the story is the Trademark Trial and Appeal Board's reason for revoking the registrations. Two of its three judges felt "these registrations must be cancelled because they were disparaging to Native Americans at the respective times they were registered."

Still, this doesn't mean the trademark registrations will ultimately be cancelled (the decision could be reversed by federal judges upon appeal) and it definitely doesn't guarantee the team is going to change its name. But after years of battling the name, it's an important victory for Native Americans — and given increasing pressure from politicians, it could be a big step toward the name eventually being changed.

This isn't the first time the "Redskins" trademark registration has been cancelled

186042990

A 2013 Native American protest of the team name. Helen H. Richardson/ The Denver Post

The Lanham Act of 1946 holds that "No trademark… shall be refused registration on the principal register on account of its nature unless it consists of… matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs."

For decades, various groups of Native Americans have been trying to use this law to cancel the "Redskins" trademark registration. In 1992, a group led by Suzan S. Harjo filed a similar suit, and the Patent and Trademark Office agreed with them in 1999, canceling the trademark registration.

But the team appealed, and in 2003, a federal judge reversed the order, ruling that the plaintiffs hadn't shown sufficient evidence that the name was insulting enough to justify the cancellation. An additional problem was that the trademark had been in place for decades, and the plaintiffs had waited to file, allowing the team to invoke the legal concept of laches — basically, the idea that the Native Americans had taken too long to challenge the name, and had thereby waived their rights.

In 2006, a new group of five plaintiffs led by Navajo Amanda Blackhorse filed a similar suit. Their ages ranged from 18 to 24 at the time of filing — eliminating the team's laches defense — and they presented significantly more evidence (in the form of academic articles, linguist testimony, film clips, newspaper clippings, and other media) that the team name is an ethnic slur. The court agreed, by a 2-1 margin.

So what happens next?

Today's decision is an important victory for Blackhorse and the plaintiffs, but it doesn't guarantee that the team will actually lose the trademark registrations.

For one, the team will almost certainly appeal the decision in federal court. This younger group of plaintiffs is hopeful that their suit won't be subject to the same legal technicalities that doomed the previous one, but it's not certain they'll be successful. In the meantime, the team will keep full protection of its name.

But even if the team loses its appeal, they'll only lose the registrations — not the actual trademarks. A person (or organization) gets a trademark by using it in commerce, and registration is simply an extra step that confers extra protections. "The Lanham Act gives the senior user of a mark the right to prevent others from using a mark that is likely to cause confusion, regardless of whether the mark is registered," says Jeremy Sheff, an intellectual property law professor at St. John's.

This protection falls under the category of common law trademark rights, and it means that even if the Redskins' trademark registrations are cancelled, they'll still be able to go after other people using the marks on merchandise on the grounds that they're confusing customers. They may not, however, be able to collect monetary damages from infringers (as they currently can), and it would be difficult to enforce these rights in response to people making products overseas.

It's theoretically possible that a judge would restrict the team's common law rights on the basis that the marks are disparaging, but unlikely — and we probably won't find that out until the team actually sues someone using the name.

"There's a chance that the Redskins mark will eventually be found not only unregisterable, but unenforceable," Sheff says. "But I don't think it's a strong one."

If a judge did rule in this way, then it would allow third parties to use the marks however they wish — on memorabilia and in advertising events, for instance. However, the combination of name and logo is subject to these trademarks that might be cancelled, but the logo trademark alone is not, so a manufacturer would have to use both of them to avoid a lawsuit. Additionally, there are some important products — such as team jerseys — that are also protected by separate NFL trademarks.

The more important issue here is whether all this might force Redskins owner Daniel Snyder — who is famously opposed to changing the team's name — to finally do it. That's also very uncertain, but it could be another step in that decision.

One factor is that losing the trademark registration would make piracy tougher to deal with. But the bigger one is that it'd be an official government ratification of the idea that the "Redskins" name is an ethnic slur. Coming on the heels of mounting public pressure from civil rights groups, politicians, and even President Obama, it could be the event that pushes Redskins owner Dan Snyder over the edge.

Further reading


Updates: This post previously stated that the logo trademark wasn't involved in the suit.

Information about the distinction between registration and enforceability was also added.

Read This

X
Log In Sign Up

forgot?
Log In Sign Up

Forgot password?

We'll email you a reset link.

If you signed up using a 3rd party account like Facebook or Twitter, please login with it instead.

Forgot password?

Try another email?

Almost done,

By becoming a registered user, you are also agreeing to our Terms and confirming that you have read our Privacy Policy.
Spinner.vc97ec6e

Authenticating

Great!

Choose an available username to complete sign up.

In order to provide our users with a better overall experience, we ask for more information from Facebook when using it to login so that we can learn more about our audience and provide you with the best possible experience. We do not store specific user data and the sharing of it is not required to login with Facebook.