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.”

It seems like every week there is a new trademark dispute involving craft breweries.  One need only check Beerpulse or Brewbound, two popular beer industry sites, to see many posts about craft beer trademark disputes.  This is not surprising because the number of craft breweries has been growing at a phenomenal pace and is now at a record number.  As of June 2013, there were 2,538 breweries in the United States, a 25% increase since 2011 (there are now more than 2,700 estimated).  And the number of beer brands is growing even faster.  An article in DRAFT Magazine states that there are more than 12,000 beer brands registered with the United States Patent and Trade Mark Office (USPTO) and 45,000 wine and spirits trademark registrations.  That makes it very difficult to come up with an unique and distinctive mark.  Some beer brands like OL’ RED CEASE AND DESIST and REDACTED IPA are beers whose original names were changed to legal terms after a trademark dispute.

Brewery Fallout

What is a brewery to do?  Well breweries should, of course, do a careful search of other trademarks before launching a new brand.  They also might one to consider using a single unique “house” brand rather than having to come up with a new name for each style of beer that they produce.  Fortunately, the craft beer industry is very collegial and many disputes never end up in litigation or come to light in the news media because breweries have amicably settled their differences.  In an often cited instance of cooperation, Russian River Brewing of Santa Rosa, California and Avery Brewing of Boulder, Colorado both realized they had SALVATION brand beers and decided to make a blend of their beer, re-named COLLABORATION NOT LITIGATION ALE.  Of course, that’s not always a feasible solution, but Collaboration is reflective of the cooperative spirit that prevails in the industry.

Still, the number of disputes is on the rise and the trend will probably continue.  It may be time for the industry to consider some sort of industry-sponsored or industry-promoted alternative dispute resolution (ADR) procedure for these disputes.  For example, the Brewers Association might consider encouraging brewery members to submit disputes that cannot be initially resolved between the parties to mediation (such as to an  INTA International Trademark Association mediator) or to binding arbitration, or even create a beer industry panel to arbitrate such disputes.

By creating such a process, the beer industry could streamline the resolution of such disputes, reduce costs and get back to what it does best:  brew more beer.
(Eugene tweets on legal issues and news in the beer industry at @BeerAttorney.  He spoke on trademark law issues at the recent Craft Brewers Conference in Denver, Colorado).

In the HBO show, “Silicon Valley,” the protagonist Richard Hendriks is an awkward, nerdy creator of a fancy algorithm for a music app that helps songwriters figure out whether their songs are infringing on another person’s copyright.  He’s been calling his app “Pied Piper” for reasons unknown, other than the fact that it vaguely has to do with music.  The algorithm turns out to be extremely valuable, and Richard decides to start a company to develop and market it, also under the name “Pied Piper.”  He brings on Jared Dunn, an awkward, nerdy business development guy, to figure out the procedures required to make Pied Piper a real company.

By doing some minimal research, Jared finds out there’s already a sprinkler company in Gilroy with the name “Pied Piper,” and the company is owned by a crotchety old man who wants nothing to do with young, rich techies.  The man claims that he owns the rights to the name Pied Piper.  To avoid a confrontation, Richard and his team attempt to come up with some new names, none of which Richard likes.

Jared: What about SMLLR?  Because we make things smaller, and this would be, like, a smaller version of the word smaller.

Gilfoyle: Looks like Smeller.

Because this is television, after a series of hilarious mishaps, everything works out and Richard is able to convince the surly old man to sell him the name for $1,000.

My issues (why I screamed at the television set):

1) Richard paid $1,000 to obtain ownership rights to the name “Pied Piper.” No, no, no, no! Richard got ripped off because he paid Crotchety Sprinkler Man (“CSM”) $1,000 for an ownership right that doesn’t exist.  CSM never “owned” the rights to the name Pied Piper because no one can own the rights to a name — you can register the name with the USPTO and receive limited protection for it under trademark law.  While CSM’s sprinkler company could potentially sue Richard’s company down the line for using the name “Pied Piper” if it caused damage to his sprinkler business, trademark protection doesn’t entitle a registrant to exclusive use of a name.

2) Maybe Richard paid $1,000 to obtain CSM’s agreement not to sue him for infringement.  Putting aside the fact that there were no witnesses to this “agreement” or a receipt from CSM confirming that Richard paid him $1,000 (high risk), even if Richard paid the money to preempt CSM from suing him, he was still probably ripped off. Would CSM’s sprinkler company have a viable trademark infringement claim against Richard’s compression algorithm-based startup?  Where is the likelihood of confusion? “Pied Piper” itself is not a very distinctive name, as it’s based off of a well-known childhood fairytale.  CSM operates out of Gilroy, a small farming community 50 miles (and a world away) from the heart of Silicon Valley, where Richard’s company is based.  CSM deals in sprinklers and Richard deals in . . . something so technologically complicated that Richard can’t even describe it in layman’s terms.  And CSM’s customer base (probably mostly farmers) likely won’t overlap with Richard’s techie base.

3) The sprinkler company is the only company in the immediate area that uses a name as generic as “Pied Piper.”  This one is more of a “reality” gripe than a legal one.  Such a generic name would probably have at least dozens of owners, a few of which may be in the Bay Area (and according to the Wall Street Journal – there are).  An additional consideration is that the name Pied Piper could potentially infringe on similar names.  It doesn’t appear that Jared did a search for similar marks, and searches through the USPTO’s online system are limited.  What if there was a plumbing company called Pied Piping?  What if there was a local bakery called Piper’s Pies?

Lessons from this episode:

• It’s probably not a great idea to immediately pay someone for ownership rights based solely on the person’s representation that he/she has these rights.  Do your research and consult a professional.

• If you’re starting a business, don’t become invested in a name (emotionally or monetarily) before you, or a business-savvy person at your company like Jared, have done your research.  The USPTO website has information on how to conduct a trademark search through its Trademark Electronic Search System.  You can also retain a private trademark search firm or an attorney to do a more thorough search for similar marks that may present problems down the road.

Don’t be forced into a situation where you’re surprised by an infringement suit well after you’ve established your company and your brand.  And don’t settle for a name like SMLLR.