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):
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.