Attorney, The Creekmore Law Firm PC

We have fielded a lot of questions lately on the decision by the United States Patent and Trademark Office (“USPTO”) to cancel the registrations of six marks belonging to the Washington Redskins of the National Football League. The decision came from the USPTO’s Trademark Trial and Appeal Board (“TTAB”) on June 18, 2014, after proceedings between the Redskins’ corporate owner and five Native American plaintiffs (full details from the USPTO here.)  Since the USPTO released that decision, we have had several people ask us about the decision and how it affects the validity of the Redskins marks.  Here are our answers to common misconceptions about the USPTO decision.

Misconception #1: Anyone Can Produce Redskins Merchandise Free from Trademark Infringement

This is not true.  The Washington Redskins still have what likely are very strong common law rights to use the word “Redskins” in connection with professional football.  They have simply lost certain affirmative rights from the cancellation of their marks.  Federally registered trademarks have a presumption of protection in court, usually carry national protection, and bring with them special statutory damages and the ability to prevent the importation of counterfeit marks with U.S. Customs.  In contrast, common law rights exist immediately upon use in a reasonable geographic area around the use.  Thus, so long as the Redskins marks remain cancelled, the Redskins will have to prove that they have protection wherever they need to enforce their marks.  So, the Redskins may find a tougher time enforcing their marks in Montana, compared to, say, northern Virginia.  To learn more about the distinction between common law rights and rights arising from registration, see this recent post from my colleague or view our Trademarks Practice Page.

Misconception #2: The USPTO Has Cancelled All of the Redskins Marks

The USPTO decision does not reach all of the Redskins registered trademarks.  Instead, the decision reaches only six specific marks that use the term “Redskins.”  It does not reach marks like the famous logo featuring an Indian brave, used apart from the word “Redskins.”  Moreover, even if the USPTO decisions could reach such a logo, the logo would have independent copyright protection, making it’s unauthorized use inadvisable.

Misconception #3: There is Nothing the Redskins Can Do to Get Back Their Federal Trademark Registrations

The Redskins can appeal the TTAB decision to Federal District Court, which they will most certainly do.  In fact, the USPTO previously invalidated the Redskins’ trademarks under similar circumstances in the 1990’s, and a Federal court overturned the decision, holding that the litigants in that case (also a small group of individual Native Americans) lacked standing to bring the case at the USPTO.  It wouldn’t be surprising if a Federal court again found a lack of standing.

Misconception #4: The Criteria Applied by the UPSTO to Cancel the Redksins Marks is Constitutional

The USPTO can cancel any mark that it finds by a preponderance of the evidence was “disparaging” at the time of registration.  So, in the case of the Washington Redskins, the USPTO decided whether that term was “disparaging” in the 1960s.  Eugene Volokh, the prominent First Amendment expert, believes this criteria is probably impermissible viewpoint discrimination.  While it is true that the USPTO’s decision does not stop the Washington Redskins from using the term “Redskins,” it does deprive the football team of special rights afforded to other trademark registrants, which may not only raise First Amendment concerns, but possibly due process concerns too.

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