USPTO Cancels Washington Redskins’ Trademark Registrations
Last week, the United States Patent and Trademark Office cancelled six federal trademark registrations for the Washington Redskins name, ruling that the name is “disparaging to Native Americans” and thus cannot receive trademark protection under federal law, which prohibits the protection of offensive or disparaging language. “We decide, based on the evidence properly before us, that these registrations must be cancelled because they were disparaging to Native Americans at the respective times they were registered,” the Trademark Trial and Appeal board wrote in its opinion.
For years now, pressure from various Native American groups has been placed on Daniel Snyder, owner of the Washington Redskins, to change the name of the team due to its connotation as a racial slur. After last week’s ruling by the USPTO, these groups may have felt they earned a huge victory and a next step in forcing the team to change its name. But, as this post will discuss, the ruling will probably have little practical effect on the Washington Redskins. To understand the effect, we must first understand what rights Daniel Snyder’s team has:
What trademark rights do the Redskins have?
Trademark rights can be broken down into three categories: Federal, State and Common Law:
Federal Trademark Law
Under the Lanham Act, a person who obtains a federal registration that predates another person’s use of the same or confusingly similar mark has superior rights to use the mark throughout the U.S. This is true regardless of whether the person has obtained a state registration or was the first person to use the mark in the state. Courtesy of the Supremacy Clause, a federal registration will always trump a state registration if there is any conflict between the two. A person or business that owns a registered trademark has the right to use that mark in the U.S., including in states where a subsequent (“junior”) state mark is registered. Once the federal registrant enters the junior holder’s market area, the junior holder must cease to use the mark. Furthermore, the federal registration itself is constructive notice of the right to use the mark across the entire U.S.
State Trademark Law
Under state law, a person who obtains state trademark registration that predates another person’s use of the same or confusingly similar mark has superior rights to the use of the mark throughout the state of registration.
Common Law Trademarks
Trademark rights exist the minute you use a trademark “in commerce”—basically the first time you put your business’ name, logo, slogan, etc. in front of the public. These automatic trademark rights are considered common law rights, which means that the trademark rights are developed through use and are not governed by statute. Common law trademark rights have been developed under a judicially-created scheme of rights governed by state law. The nice thing about common law rights is that they are automatic, i.e. you don’t need to register your trademark to establish these rights. Once you use the mark in commerce, you own the trademark and the common law rights associated with it, including the ability to exclude others from using your trademark.
This is where the media has gone astray with it’s legal analysis. For example, ESPN reporter Darren Rovell, discussed how the general public can now start printing maroon and gold Washington Redskins merchandise, and the Redskins won’t be able to challenge these infringers due to last week’s ruling. This analysis is off base due to the fact that common law rights still afford protection, as discussed above, as long as the trademark owner has been using the mark in commerce. The Redskins have been using the Washington Redskins name and logo in commerce since 1933, and it is one of the more well-known names and logos in the entire country. If fans began printing merchandise today bearing the name or logo, the Redskins would have a strong trademark infringement claim against the manufacturer of those goods based upon their common law rights.
So why does the USPTO’s ruling matter?
The USPTO’s ruling is still important because common law trademark rights are much less robust than federal trademark rights. Federal trademark protection provides the owner the ability to sue in federal court, recover statutory damages, attorneys fees, treble (triple) damages for willful infringement, national priority, and the right to use the ® to give notice of rights in a mark. These can be powerful tools in defending and asserting a trademark right, but they are in addition to the other rights afforded common law trademarks. So the Redskins may not be able to claim triple damages in federal court, but they can still force people to stop using the marks and to pay damages for infringement.
The team will appeal the USPTO’s ruling according to a statement from its attorney, and it will be able to keep its trademark protection during appeal. Further, losing the trademark would not force the team to change its name — as the USPTO pointed out in its fact sheet about the case, the Trial and Appeal Board “does not have jurisdiction in a cancellation proceeding to require that a party cease use of a mark, but only to determine whether a mark may continue to be registered.”
While the ruling today was a blow to the Washington Redskins, the long term effect is minimal compared to what the media has portrayed.