Beyond Disparaging: Five Important Clarifications Regarding Redskins Trademark Decision

Over the past year, debate regarding whether the National Football League’s Washington, D.C. franchise should continue to call itself the Redskins has risen to a fever pitch once again. So, naturally, it was big news when, on June 18, 2014, the USPTO’s Trademark Trial and Appeal Board (“TTAB”) issued a decision canceling the team’s six federal registrations for trademarks that include the term “Redskins.” As has been widely reported, the TTAB reasoned that the term “Redskins” was disparaging of Native Americans when the various marks were registered and should not receive federal trademark protection.

There is a great deal of confusion, however, regarding precisely what the TTAB’s decision means and what it does not mean. To help clear up some of this confusion, below are five important facts regarding the practical implications of the decision.

1) The Redskins’ Trademark Registrations Have Not Actually Been Canceled . . . Yet

The TTAB’s decision does not go into effect immediately. Its decision is subject to appeal to the United States District Court, and the team has already indicated that such an appeal will be forthcoming. The District Court’s decision, too, will be subject to appeal. As such, even if the TTAB’s decision ultimately stands, the case will not likely be final for several years. The registrations will remain “on the federal register of marks” and not be listed in the USPTO’s records as “cancelled” until after the case has made its way through the courts.

2) The Redskins Will Not Have to Change Their Name

Even if the TTAB’s decision stands, the Redskins will not be compelled to change the name of the franchise. The decision speaks only to the team’s right to register the “Redskins” mark, not to its right to use the name.

3) The Team Can Still Sue Those Who Infringe on the “Redskins” Mark

Should the Redskins ultimately lose their federal trademark registrations, they will not likely lose their ability to protect their exclusive use of the marks. Trademark rights in the United States come from use of a mark on or in conjunction with goods or services, not merely from the additional step of federal trademark registration. Indeed, this last step is optional.

Based on their longstanding use of the marks in question, the Redskins likely enjoy common law trademark rights independent of federal trademark registration. Should the team be stripped of federal registration, it could still pursue infringers through lawsuits based on these common law rights.

4) Lack of Registration Would Shift Burden of Proof in Infringement Suit

While the Redskins may still bring suit to enforce its common law trademark rights, losing its federal registrations will eliminate the presumptions of ownership and of a nationwide scope of rights that come with federally-registered trademarks. Common law trademark rights exist on a state-by-state basis. This means that the Redskins would have to establish the legitimacy of their common law rights to use the marks in every infringement suit they file. As discussed above, however, it is likely that the Redskins will have little difficulty in establishing the existence of such rights.

5) Lack of Registration Would Deprive the Redskins of Valuable Federal Enforcement

Where losing the registration of their trademarks has the greatest potential to harm the team is in the corresponding loss of the ability to record the registrations with the U.S. Customs and Border Patrol Service, which blocks importation of infringing or counterfeit goods. Without support of the Customs department, the market may be flooded with inexpensive Redskins gear.

To the extent that anything stemming from the TTAB decision puts practical pressure on the Redskins organization to change the team’s name, it would be the loss of merchandise revenue associated with the absence of Customs protection. The likelihood, however, is that the TTBA decision will have little practical impact on the ultimate outcome regarding whether the NFL’s Washington, D.C. franchise will continue calling itself the “Redskins.”