Taking big hits is quite familiar to professional football teams. The hit laid down by a federal District Court on July 8, 2015, however, is one that Washington’s professional football franchise will remember for a long time. District Court Judge Gerald Bruce Lee upheld the cancellation of federal registration for the team’s “Redskins” trademarks, holding that “the (1) dictionary evidence; (2) literary, scholarly, and media references; and (3) statements of individuals and groups in the referenced group show that the Redskins Marks consisted of matter that ‘may disparage’ a substantial composite of Native Americans during the relevant time period.”
June 18, 2014, the USPTO’s Trademark Trial and Appeal Board (“TTAB”) had issued a decision cancelling the team’s six federal registrations for trademarks that include the term “Redskins.” The team brought suit in federal district court to challenge the TTAB’s decision. Judge Lee’s ruling denied the team’s motion for summary judgment and granted cross-motions for summary judgment by the TTAB and the group of Native Americans that brought the proceedings before the TTAB.
The Redskins’ Trademark Registrations Have Not Actually Been Cancelled . . . Yet
Like the TTAB’s decision, the District Court decision does not go into effect immediately. Its decision is subject to appeal, and the team has already indicated that such an appeal will be forthcoming. As such, even if the decision ultimately stands, the case will not likely be final for some time. 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.
The Redskins Will Not Have to Change Their Name
Even if the Court’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” marks, not to its right to use the name.
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.
Lack of Registration Does Have Practical Consequences
While the Redskins may still bring suit to enforce common law trademark rights, losing 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.
Where losing the registration of their trademarks has the greatest potential to harm the team in the short term, however, 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.
The P.R. Battle Within the Case
In the long term, we wonder whether the team’s decision to persist in fighting this battle in the Courts will ultimately result in insurmountable pressure to change the team’s name. Public awareness of the concerns around the name increases with every appeal (and every court loss). Celebrities and politicians are increasingly hostile to the team’s use of their name. As the matter seems destined for the Supreme Court, it is worth asking: Win or lose, is it only a matter of time before the “Redskins” become a relic of the past?