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Posted on June 28, 2014.
Some key things to know about the recent decision to cancel federal registrations for the trademark REDSKINS, which was made by an administrative court in the U.S. Patent & Trademark Office:
• The decision does not force the Redskins to change their name. You don’t need a trademark registration to use a name for a product or service. Trademark registration just strengthens trademark rights that automatically arise from using a word or phrase as a trademark.
• The case isn’t over. The Redskins can and will appeal to federal court. And the decision was 2-1, not unanimous, which somewhat undercuts its persuasiveness.
• This isn’t the first time this has happened. The same administrative court invalidated these registrations in 1999. A federal trial court reversed that decision, holding that the evidence of racial disparagement was insufficient. That decision was later overruled because a federal appellate court determined that the plaintiffs took too long to sue. The advocates for revoking these registrations then got new plaintiffs to file a new challenge – American Indians who turned 18 just before filing the new suit.
• You could see this decision coming. The same administrative court recently rejected on disparagement grounds applications to register THE SLANTS for a rock band composed of Asian men, KHORAN for wine, and HEEB for a magazine on Jewish life (even though the publication was pro-Jewish and run by Jews).
• All the plaintiffs had to prove was that a substantial proportion (not even a majority) of the American Indian community considered the term REDSKINS disparaging at the time the registrations were issued, which ranged from 1967 to 1990.
• The team generally will still be able to use its “common law” trademark rights to stop others from using the REDSKINS name without permission, such as on counterfeit jerseys. It just will have to do more work to demonstrate its trademark rights rather than being able to rely on its federal registrations to establish those rights.
• If the decision stands, it may hamper some efforts by the team to protect against counterfeiters and mimics. The decision might keep the team from being able to use the U.S. Customs Service to stop the importation of counterfeit merchandise. Also, it’s easier to stop cybersquatters if you have a trademark registration. (Cybersquatting is registering a domain name that approximates someone else’s trademark, like RedskinsBall.com.) In addition, it’s easier to attack trademark infringements on social media, such as Facebook and Twitter, if you have a trademark registration.
• The team also has trademark registrations for their logo without the word REDSKINS, such as the iconic American Indian on the helmet. Those registrations were not attacked or cancelled.
• The biggest issue is whether this cancellation violates the First Amendment. Courts traditionally say the First Amendment does not matter here because you don’t need a trademark registration to use a trademark – no speech is stopped by a registration denial or cancellation. But being registered is better. You can get a registration lauding a group, but not a registration disparaging a group. That’s discrimination on the basis of viewpoint, which the First Amendment should address. Yet, because of existing precedents, perhaps only the U.S. Supreme Court could apply First Amendment protection here.
Written on June 18, 2014
by John B. Farmer
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