[co-author: James Stewart, Law Clerk]
In a ruling that has quickly spread throughout social media, the Trademark Trial and Appeal Board (the “Board”) issued an order cancelling six trademark registrations which contain the word REDSKIN (the “Redskins Registrations”), owned by the Washington, D.C. professional football team, the Redskins (the “Team”). In a divided ruling, the Board stated that the Redskin Registrations “must be cancelled because they were disparaging to Native Americans at the time of registration,” in violation of Section 2(a) of the Trademark Act, which prohibits the registration of trademarks that disparage persons or bring them into contempt or disrepute.
While there is some confusion about the implications of this decision for the future of the Team’s name, the Board prominently noted the limited effect of its decision at the outset of its opinion. Specifically, the Board stated that the decision only concerns the right to federal registration of REDSKIN-formative trademarks, noting that the Board lacks any authority to prohibit the Team from use of its REDSKIN-formative trademarks
This sentiment was echoed in a statement by Trademark Counsel for the Team, which noted that while this decision could potentially invalidate the Team’s federal trademark registrations, the Team still owns exclusive, enforceable rights in the REDSKINS marks based on its common law rights. While federal registration of a trademark confers a number of benefits on its owner, it does not create rights in the trademark. Rather, trademark rights arise upon commercial use of a trademark in connection with particular goods or services.
That being said, loss of federal registration can significantly impact the value of a mark and complicate efforts to enjoin unauthorized third-party uses of a trademark. For example, federal registration constitutes prima facie evidence of ownership and validity in trademark infringement litigation. Additionally, federal registration provides registrants with the right to exclusive use of a mark in connection with particular goods and services nationwide.
Thus, the potential loss of the REDSKINS-formative federal registrations could hold negative implications for existing trademark licensing or merchandise agreements. Reduced ability to enforce rights in the Redskins Registrations against unauthorized third-parties using the REDSKINS marks on merchandise or other goods and services may reduce the value of authorized merchandise and licensing agreements. Furthermore, widespread unauthorized uses of the REDSKINS marks could ultimately lead to brand damage and a loss of control over the quality of the goods and services provided under the marks.
Notwithstanding the potential issues associated with relying solely on common law trademark rights, the team owns a number of other federal registrations which do not include the term “Redskins” and incorporate the Team’s logo design. These registrations are unaffected by the Board’s decision and remain fully enforceable. As such, if the decision to cancel the Redskins Registrations is upheld on appeal, the Team may be able to strategically use the REDSKINS marks in conjunction with the remaining valid registrations as a means of mitigating the potential consequences of a loss of the federal registrations.
While sensational headlines may give rise to the inference that the Team has lost all rights in the REDSKINS name, it is clear that the battle for the Redskins Registrations is far from over. There is little doubt that the Team will appeal this decision. The Redskins Registrations will remain in force for the duration of such an appeal, which could stretch for several years. Thus, while the REDSKINS-formative federal registrations may be ultimately removed from the Federal Register, the consequences of Board’s decision, and any subsequent decisions on appeal unfavorable to the Team, remain to be seen.