The Washington Redskins will soon be an example of all that can go wrong when a trademark loses federal trademark protection. This summer, a federal judge ordered the cancellation of six of the team’s federally registered trademarks, including the “Redskins” name. The judge held that the name was disparaging to Native Americans and therefore violated Section 2 of the Lanham Act, which prohibits registration of marks that “may disparage” or bring people into contempt or disrepute. A variety of factors contributed to the determination that the mark was, indeed, disparaging, including the fact that the dictionary defines the word as offensive and that the National Congress of American Indians declared the name racist.
The Redskins are not the only team to receive public scrutiny based on negative Native American affiliations. Professional football, hockey and baseball teams, as well as collegiate teams, have all received similar pressures over the last several decades. In fact, in 2005, the National Collegiate Athletic Association (NCAA) passed a resolution that imposed postseason penalties on schools that did not justify their Native American affiliation through formal Native American support programs. Professional sports franchises, on the other hand, have not taken such a sweeping approach. Major League Baseball’s (MLB) Atlanta Braves and Cleveland Indians, as well as the National Hockey League’s (NFL) Chicago Blackhawks and the National Football League’s (NFL) Kansas City Chiefs have all been able to hold on to their names, despite public protests.
The recent ruling against the Redskins is a major windfall for the Native American activists who brought suit and may set the stage for future actions against teams with controversial names. Though the cancellation will not take effect until the team has exhausted the appeals process, which it plans to do, this decision could have long-reaching legal consequences that expand beyond the court of public opinion.
Federal trademark registration provides mark owners like the Redskins with several important benefits. Losing registration not only taints the brand’s image, but also removes safeguards that prevent things like the production and sale of counterfeit fan gear and memorabilia. Here’s a list of the benefits of federal registration (that the Redskins are about to lose):
- The statutory presumption that the mark is valid, the registrant owns the mark, and the registrant has the exclusive right to use the mark.
- Public notice of ownership. Such notice discourages the use of and prevents the registration of confusingly similar marks and also eliminates any defense of good faith adoption and use made by a third party after the mark’s registration. A mark is confusingly similar if, when used on related goods or services, consumers would assume that the good or service comes from the same source.
- National protection, regardless of whether the mark is actually being used in certain geographic locations. Unregistered mark owners, in contrast, are limited to common law rights. Common law rights differ from federal protection because they only extend to the specific areas in which the owner actually uses the mark and
- The mark owner’s right to file a trademark infringement lawsuit in federal court and to collect monetary awards, including damages and attorney’s fees.
- A basis for foreign registration so that mark owners can protect their marks internationally.
- The power to block imports of counterfeits and infringing materials by recording the mark with US Customs and Border Protection (“CBP”). The CBP allocates substantial resources to targeting, intercepting, and seizing shipments of counterfeit and grey market goods, thus vastly strengthening the protection of recorded marks. Grey market goods are items that are manufactured overseas and then imported into the US without the trademark holder’s permission.
- The potential for incontestability. Assuming the mark is used continuously five years after the registration date, the mark becomes eligible for incontestability. Incontestable registration serves as conclusive evidence of validity, registration and ownership.
Without these protections, the Redskins will be forced to rely on limited common law rights to protect their marks. Though the team’s fame may serve to discourage unauthorized use of the marks, the Redskins will no longer be able to rely on official notice, nor will they have the automatic right to sue suit third parties who use their marks in federal court, or prevent the importation or deportation of counterfeit memorabilia.
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