By David M. Silverman and Marshall J. Nelson
The Trademark Trial and Appeal Board (TTAB or Board) decided to cancel the Washington Redskins’ federal trademark registrations for REDSKINS as disparaging of Native Americans, in violation of Section 2(a) of the Trademark Act (15 U.S.C. § 1052(a)). In the real world of trademark use the decision is almost a non-event, as the Board went to great pains to explain. In fact, that explanation is almost as noteworthy as the decision in Blackhorse v. Pro Football, Inc.
In a divided (2-1) decision, the TTAB agreed to cancel six trademark registrations belonging to the Washington Redskins that include the term REDSKINS or REDSKINETTES as disparaging to Native Americans. More specifically, the Board held that the registrations must be cancelled “because they were disparaging to Native Americans at the respective times they were registered” in violation of Section 2(a) of the Trademark Act. The team is expected to appeal this decision and the marks will remain registered, at least until all appeals are exhausted.
This case follows previous TTAB litigation that dates back to 1992. In that earlier case, the Board ordered the registrations cancelled in 1999. However, that case was reversed on appeal to the U.S. District Court for the District of Columbia, on grounds that the finding of disparagement was “not supported by substantial evidence” and that the doctrine of laches also precluded consideration of the disparagement claim. Laches is the legal doctrine that bars legal claims on the basis of unreasonable delay. The U.S. Court of Appeals for the D.C. Circuit affirmed the lower court on the basis of laches alone.
The parties to the current proceeding agreed to rely on all of the evidence that had been submitted in the first proceeding and the Board proceeded on that basis. The Board again held that the term REDSKINS disparaged Native Americans at the time that the trademark applications were filed, which is the required standard for proving disparagement under the Trademark Act. In addressing the laches claim, the Board found it inapplicable because, among other things, several of the plaintiffs turned 18 shortly before filing this petition to cancel, and therefore, they did not exercise unreasonable delay in waiting to file the petition. The Board also commented that it may not be appropriate to apply laches in a case “where a registrant’s financial interest is weighed against human dignity.”
The dissenting TTAB judge would have held that there was insufficient evidence to support a finding of disparagement, because the U.S. District Court had so found and these plaintiffs relied on the same evidence as was presented in the previous case.
The meaning of this decision
In addition to an Official United States Patent and Trademark Office Statement released with the TTAB’s decision, the Board took the unusual step of issuing the following Media Fact Sheet explaining in clear terms what trademark registration means, the practical benefits of federal registration, the difference between registration and use of a trademark, and the nature of common law trademark rights:
What this decision means
If the cancellation of the registrations for the trademarks involved in this case is not appealed or if affirmed following possible review by a federal court, Pro Football, Inc., as record owner of the involved registrations will lose the legal benefits conferred by federal registration of the marks. These benefits of federal registration include:
- The legal presumptions of ownership and of a nationwide scope of rights in these trademarks;
- The ability to use the federal registration ® symbol, and;
- The ability to record the registrations with the U.S. Customs and Border Patrol Service so as to block the importation of infringing or counterfeit foreign goods.
What this decision does not mean
This decision does not, however, require the Washington, D.C. professional football team to change its name or stop using the trademarks at issue in this case:
- Losing the federal registration of a trademark does not necessarily mean that the owner loses all legal rights in the mark. This is because 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, optional step of federal registration;
- The TTAB determines only whether a mark can be registered with the federal government (and thus gain the additional legal benefits thereof), not whether it can be used; and
- The mark owner may still have rights in the mark based on use, known as “common law” rights—and those use-based rights may continue to exist even if a federal registration is cancelled.
Why is this noteworthy? Because members of the media, and certainly the general public, know very little about trademarks. With disturbing frequency they read (or write) a news story that someone has “trademarked” a term and come away with the impression that the words have somehow been usurped from the public lexicon.
Even those who work with trademarks—ad agencies, brand managers, sometimes even their lawyers—are not immune from this confusion. Some think a trademark must be registered before it can be used; others believe they can “trademark” a term by just slapping a TM on it; and too many are under the impression that a trademark registration is equivalent to a monopoly and a guarantee against all future conflicts.
If the Redskins decision and all the publicity surrounding it do nothing else, accurate reporting of the explanation in the TTAB’s Media Fact Sheet could have more lasting effect on the public discussion of trademark matters than the merits of the decision itself. In any event, all of the Redskins registrations remain intact pending a final decision on appeal. It is more likely that any change in the team name will be the result of political pressure, or some other proceeding, rather than a cancellation of the trademark registration.