A few weeks ago, the trademark dispute involving the Washington Redskins was back in the news again, with a federal district court judge ruling in favor of the cancellation of the “Redskins” word mark registered with the United States Patent and Trademark Office (USPTO). While this ruling does not invalidate all of the Redskins trademark rights per se, as we addressed when we discussed the internal USPTO ruling, it does deprive the Redskins of significant rights associated with its word marks (it’s logos and other marks not including the word “Redskins” are not subject to the decision.) So what does the ruling from the United States District Court for the Eastern District of Virginia in the case of Pro-Football, Inc. v. Amanda Blackhorse, et al. mean, and what can the Redskins do about it?
Trademark Rights are Limited
A trademark owner can stop other businesses that sell the same product or service from using a confusingly similar trademark in a way that is likely to cause customer confusion about the source of the goods or services. That’s it. That’s all the power a trademark owner has. If there is no confusion, then there is no infringement.
So for example, companies making different products can use identical trademarks, like GERBER for baby food and GERBER for knives. No one is likely to confuse baby food for knives, or vice versa, and so there is no infringement.
In a recent article in the Roanoke Times, I discussed with reporter Yann Rannaivo the first steps a startup business should take to protect itself from legal liability and secure legal protection for its intellectual property. This blog posts expounds on the brief thoughts I shared in the Roanoke Times by providing further detail on those key first steps a technology business–or any startup–should pursue to protect its legal interests.
Many start ups begin with limited finances, forcing them to consider what they can and cannot afford at any given stage in development. While most small businesses and start ups question whether they can afford to pursue trademark registration as part of their brand development, what they cannot afford is to wind up on the wrong side of litigation for failing to fully explore on whose turf they may inadvertently be treading. It is easy for businesses of all sizes, whether starting up, re-branding, or expanding their growth into other areas of development, to unwittingly adopt a brand already in use by another business. Learning what, or who, is in a name is a step in the start up process that most cannot afford to skip.