The Redskins Decision: What It Means and Does Not Mean

by Davis Wright Tremaine LLP
Contact

On June 18, 2014, the Trademark Trial and Appeal Board (TTAB or Board) issued its ruling in Blackhorse v. Pro Football, Inc. (TTAB Cancellation No. 92046185) cancelling the Washington Redskins’ federal trademark registrations for REDSKINS as disparaging of Native Americans, in violation of Section 2(a) of the Trademark Act (15 U.S.C. § 1052(a).) In the real world of trademark use the decision is almost a non-event, as the Board went to great pains to explain. In fact, that explanation is almost as noteworthy as the decision itself.

The Decision
In a divided (2-1) decision, the TTAB agreed to cancel six trademark registrations belonging to the Washington Redskins that include the term REDSKINS or REDSKINETTES as disparaging to Native Americans. More specifically, the Board held that the registrations must be cancelled “because they were disparaging to Native Americans at the respective times they were registered” in violation of Section 2(a) of the Trademark Act. The team is expected to appeal this decision and the marks will remain registered, at least until all appeals are exhausted.

This case follows previous TTAB litigation that dates back to 1992. In that earlier case, the Board ordered the registrations cancelled in 1999. However, that case was reversed on appeal to the U.S. District Court for the District of Columbia, on grounds that the finding of disparagement was “not supported by substantial evidence” and that the doctrine of laches also precluded consideration of the disparagement claim. Laches is the legal doctrine that bars legal claims on the basis of unreasonable delay. The U.S. Court of Appeals for the D.C. Circuit affirmed the lower court on the basis of laches alone.

The parties to the current proceeding agreed to rely on all of the evidence that had been submitted in the first proceeding and the Board proceeded on that basis. The Board again held that the term REDSKINS disparaged Native Americans at the time that the trademark applications were filed, which is the required standard for proving disparagement under the Trademark Act. In addressing the laches claim, the Board found it inapplicable because, among other things, several of the plaintiffs turned 18 shortly before filing this petition to cancel, and therefore, they did not exercise unreasonable delay in waiting to file the petition. The Board also commented that it may not be appropriate to apply laches in a case “where a registrant’s financial interest is weighed against human dignity.”

The dissenting TTAB judge would have held that there was insufficient evidence to support a finding of disparagement, because the U.S. District Court had so found and these plaintiffs relied on the same evidence as was presented in the previous case.

The Meaning of this Decision
In addition to an Official United States Patent and Trademark Office Statement released with the TTAB’s decision, the Board took the unusual step of issuing the following Media Fact Sheet explaining in clear terms what trademark registration means, the practical benefits of federal registration, the difference between registration and use of a trademark, and the nature of common law trademark rights:

What This Decision Means
If the cancellation of the registrations for the trademarks involved in this case is not appealed or if affirmed following possible review by a federal court, Pro Football, Inc., as record owner of the involved registrations will lose the legal benefits conferred by federal registration of the marks. These benefits of federal registration include:

  • The legal presumptions of ownership and of a nationwide scope of rights in these trademarks;
  • The ability to use the federal registration ® symbol, and;
  • The ability to record the registrations with the U.S. Customs and Border Patrol Service so as to block the importation of infringing or counterfeit foreign goods.

What This Decision Does Not Mean
This decision does not, however, require the Washington D.C. professional football team to change its name or stop using the trademarks at issue in this case:

  • Losing the federal registration of a trademark does not necessarily mean that the owner loses all legal rights in the mark. This is because trademark rights in the United States come from use of a mark on or in conjunction with goods or services, not merely from the additional, optional step of federal registration;
  • The TTAB determines only whether a mark can be registered with the federal government (and thus gain the additional legal benefits thereof), not whether it can be used; and
  • The mark owner may still have rights in the mark based on use, known as “common law” rights—and those use-based rights may continue to exist even if a federal registration is cancelled.

Why is this noteworthy? Because members of the media, and certainly the general public, know very little about trademarks. With disturbing frequency they read (or write) a news story that someone has “trademarked” a term and come away with the impression that the words have somehow been usurped from the public lexicon.

Even those who work with trademarks—ad agencies, brand managers, sometimes even their lawyers—are not immune from this confusion. Some think a trademark must be registered before it can be used; others believe they can “trademark” a term by just slapping a TM on it; and too many are under the impression that a trademark registration is equivalent to a monopoly and a guarantee against all future conflicts.

If the Redskins decision and all the publicity surrounding it do nothing else, accurate reporting of the explanation in the TTAB’s Media Fact Sheet could have more lasting effect on the public discussion of trademark matters than the merits of the decision itself. In any event, all of the Redskins registrations remain intact pending a final decision on appeal. It is more likely that any change in the team name will be the result of political pressure, or some other proceeding, rather than a cancellation of the trademark registration.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Davis Wright Tremaine LLP | Attorney Advertising

Written by:

Davis Wright Tremaine LLP
Contact
more
less

Davis Wright Tremaine LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
Feedback? Tell us what you think of the new jdsupra.com!