There’s another sports related US trademark issue that continues in the news. This time it revolves around the NFL’s Washington Redskins. The Redskins have been so named since 1933, but if a group of Native Americans are successful in their legal challenge, the Redskins may have to be the Redskins without the benefit of a United States trademark registration. (Click here to see related Washington Post article.)
Pro-Football, Inc. first trademarked the name, i.e., obtained a federal trademark registration, in 1967. However, in 2006, a group of Native Americans had their trademark lawyers file a petition before the Trademark Trial and Appeal Board (TTAB), which is part of the U.S. Patent and Trademark Office, asking federal authorities to strike down several of the team’s trademark registrations for “Redskins” on the grounds that it is a racial slur. The TTAB case, which has been ongoing for over six years, should be nearing a resolution. The parties’ trademark lawyers have submitted their trial briefs and a request for a hearing has been made. Currently, there is a motion to strike pending in the case, but one would likely expect a decision in the case before the end of 2013.
Whether or not the TTAB cancels Pro-Football, Inc.’s trademark registrations, it will not prevent the Washington Redskins from using the name Redskins. But losing their trademark registrations could make it more difficult for the team to go after trademark infringers and imitation merchandise, since a trademark registration provides additional legal presumptions in favor of trademark owners. Every good trademark lawyer knows that it is easier to enforce a trademark with a valid trademark registration rather than relying solely on trademark common law.
This case prompts an interesting question. What are the rules about offensive or scandalous trademarks? Can you register a trademark for bad words or scandalous phrases? Federal statute prohibits the registering a trademark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”.
The statute language may appear subjective or even ambiguous. How does one decide what constitutes immoral or scandalous matter and what doesn’t? The Pro-Football, Inc. first filed for US Trademark protection in 1967 and attitudes have changed a lot since then. If the same trademark applications were filed today, scrutiny during the examination period would likely be very different. In 1967 Redskins may not have seemed offensive, and thereby passed muster at the Trademark Office, but things are different today. It will be interesting to see how the TTAB addresses the issues raised by time-altered attitudes and whether Pro-Football’s brand will take a loss.
As indicated above, protecting your brand is easier with a solid trademark registration. Trademark registrations have the benefit of legal presumptions such as the presumption of the ownership of the mark, the exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration, and the ability to bring an action concerning the mark in federal court. Should the
Redskins lose at the Trademark Trial and Appeal Board, they would lose these benefits, which could increase the costs of having their trademark lawyers protect the Redskin brand.