Redskins Stripped Of Trademarks

Last Updated: 11 years ago

In a landmark decision that reverberated across the world of professional sports and intellectual property law, the U.S. Patent and Trademark Office (USPTO) canceled the trademark registrations held by the Washington Redskins (now known as the Washington Commanders). This action, prompted by a petition filed by five Native Americans, declared the team’s name "disparaging to Native Americans," effectively stripping the organization of six of its registered trademarks. This article delves into the details of this pivotal ruling, its implications, and the subsequent legal avenues available to the team.

The Core of the Decision: Disparagement and Trademark Law

The foundation of the USPTO’s decision rested on Section 2(a) of the Lanham Act, the federal statute governing trademarks. This section prohibits the registration of trademarks that may disparage, bring into contempt, or disrepute any persons, living or dead, institutions, beliefs, or national symbols. The Native American petitioners argued that the term "Redskins," historically used to describe Native Americans, was indeed a disparaging term and therefore ineligible for federal trademark protection.

The USPTO’s Trademark Trial and Appeal Board (TTAB) carefully considered the historical context of the term, its usage in both mainstream and Native American communities, and expert testimony presented by both sides. The TTAB ultimately concluded that a substantial composite of Native Americans found the term offensive at the time the trademarks were initially registered, satisfying the legal standard for disparagement. This determination triggered the cancellation of the team’s trademark registrations.

The Immediate Impact: Loss of Federal Trademark Protection

The cancellation of the trademark registrations meant the Washington Redskins lost the significant legal advantages conferred by federal trademark law. These advantages included:

• Nationwide Priority: Federal registration provides nationwide constructive notice of the trademark owner’s claim of ownership, giving them priority over later users of the same or similar mark across the country.
• Legal Presumption of Ownership: A registered trademark carries a legal presumption of ownership, making it easier to win infringement lawsuits.
• Exclusive Right to Use: Registration grants the owner the exclusive right to use the trademark in connection with the goods or services specified in the registration.
• Ability to Sue in Federal Court: Trademark owners with federal registrations can sue infringers in federal court, often a more advantageous forum than state court.
• Injunctions and Damages: Successful trademark plaintiffs can obtain injunctions preventing further infringement and recover monetary damages from infringers.

Without these federal protections, the team faced a weakened position in defending its brand against potential infringers. The Redskins Stripped Of Trademarks.

Misconceptions and Realities: What the Ruling Did and Did Not Do

It is crucial to understand the precise scope of the USPTO’s ruling. Despite the loss of federal trademark registrations, the Redskins were not legally compelled to change their name. The ruling did not make the use of the name illegal. Rather, it weakened the team’s legal arsenal for protecting its brand identity.

Furthermore, the ruling did not automatically open the floodgates for unauthorized use of the "Redskins" name and associated logos. While the team lost the benefits of federal trademark protection, it still retained common law trademark rights.

Common Law Trademark Rights: A Foundation of Protection

Common law trademark rights arise from the actual use of a trademark in commerce. Even without federal registration, a business can establish trademark rights simply by using a distinctive mark to identify its goods or services. These rights are geographically limited to the areas where the mark is actually used and where the business has established a reputation.

In the case of the Redskins, the team had used the "Redskins" name and associated logos for decades, building substantial brand recognition and goodwill. This long-standing use created valuable common law trademark rights. The team could still sue infringers based on these rights, arguing that their unauthorized use of the "Redskins" mark was likely to cause consumer confusion. The legal standard for proving trademark infringement under common law is similar to that under federal law, focusing on the likelihood of consumer confusion.

The Legal Battleground: Potential Appeal Options

Following the USPTO’s decision, the Redskins faced a strategic choice regarding how to proceed. They had two primary avenues for appealing the ruling:

1. Appeal to the U.S. District Court for the Eastern District of Virginia: This option would allow the team to introduce new evidence and develop the factual record in the case. This could be advantageous if the team believed it had additional evidence to support its claim that the term "Redskins" was not disparaging or that Native American views had changed over time. However, district courts typically defer to the expertise of administrative agencies like the USPTO in matters of trademark registration. If the team lost in district court, it could then appeal to the U.S. Court of Appeals for the Federal Circuit.

2. Appeal to the U.S. Court of Appeals for the Federal Circuit: This court specializes in intellectual property law and has extensive experience in trademark registration matters. However, an appeal to the Federal Circuit would be based solely on the existing record before the TTAB; the team would not be able to introduce new evidence. If the team lost in the Federal Circuit, its only remaining option would be to appeal to the U.S. Supreme Court.

The choice of appeal route involved a careful assessment of the strengths and weaknesses of the team’s case and the potential for success in each forum.

The Historical Context: A Long-Running Controversy

The controversy surrounding the "Redskins" name was not new. The USPTO had previously ruled against the team in 1999, canceling its trademark registrations on similar grounds. However, that decision was overturned on appeal because the court found that the Native American petitioners had waited too long to bring their challenge, violating the legal doctrine of laches.

The current case involved younger petitioners who had reached adulthood more recently, thus avoiding the laches issue. This difference proved crucial in the USPTO’s decision to cancel the Redskins’ trademarks.

The Broader Implications: Trademark Law and Social Change

The Redskins Stripped Of Trademarks case highlights the intersection of trademark law, social justice, and cultural sensitivity. The decision underscores the importance of considering the potential impact of trademarks on different groups and the willingness of the legal system to address marks that are deemed offensive or disparaging.

The case also demonstrates the evolving nature of societal norms and attitudes. What may have been considered acceptable or even commonplace in the past may no longer be tolerated in a more inclusive and diverse society. Trademark law, as a reflection of societal values, must adapt to these changes.

Conclusion

The USPTO’s decision to cancel the Washington Redskins’ trademark registrations was a significant event with far-reaching implications. While the team was not legally forced to change its name at that time, the loss of federal trademark protection significantly weakened its ability to protect its brand identity. The case also serves as a reminder of the importance of considering the potential impact of trademarks on different groups and the evolving nature of societal norms. The Redskins Stripped Of Trademarks. This decision had major ramifications on the team’s brand, and eventually led to the changing of the name. The Redskins Stripped Of Trademarks.