By Debby Winters
In the case Blackhorse v. Pro Football, Inc. (TTAB Cancellation No. 92046185) the US PTO cancelled the registration of the following 6 trademarks owned by the football team the Washington Redskins:
(1) THE REDSKINS & Design, Reg. No. 0987127 issued in 1972
(2) THE REDSKINS (Stylized), Reg. No. 0836122 issued in 1967
(3) WASHINGTON REDSKINS & Design, Reg. No. 0986668 issued in 1974
(4) WASHINGTON REDSKINS, Reg. No. 0978824 issued in 1974
(5) REDSKINS, Reg. No. 1085092 issued in 1978
(6) REDSKINETTES, Reg. No. 1606810 issued in 1990.
The marks, each containing the word “Redskin”, were registered between 1967 and 1990 and cover entertainment services such as presentations of professional football contests and/or cheerleading performances. Although canceled by the Trademark Trial and Appeal Board (TTAB). The registrations will remain in force pending the football team’s planned appeal. The reason for cancellation has been covered extensively so other than saying it is because the marks have been referred to as disparaging, I’m going to focus on what this means as far as trademark law is concerned.
Federal trademark law does not permit registration of trademarks that “may disparage” individuals or groups or “bring them into contempt or disrepute.” However, the effect of the cancellation at this point is largely symbolic since the ruling cannot stop the team from selling T-shirts, beer glasses and license-plate holders with the moniker or keep the team from trying to defend itself against others who try to profit from the logo. And the trademark registrations will remain effective during any appeal process.
It should be noted that the U.S. Patent and Trademark Office has refused to register trademarks containing the word “Redskins” about a dozen times since 1992 on the grounds that the term may disparage Native Americans. Among the rejected: Redskins Fanatics, Redskin Pigskins and Washington Redskins Cheerleaders. The latest to be turned down was “Redskins Hog Rinds,” which was submitted on behalf of a Capitol Heights, Md., man. In a letter from the agency in December, an examining attorney wrote that it was denied because it contained “a derogatory slang term.” However, the six at issue were issued before the controversy over the name began.
The team is expected to appeal the decision and even if it loses the appeal, the team can maintain “common law” rights to the name, allowing it to make a case against any individual or organization looking to profit from it. The TTAB majority made clear, the decision affects only the right to register, but not the right to use the REDSKINS marks. The Redskins have already announced that they will continue to use the name.
If the registrations ultimately were cancelled, the team’s trademark enforcement efforts would be somewhat hampered since a federal registration is a prerequisite to obtaining enhanced remedies for counterfeiting. It is also required in order to record trademark rights with U.S. Customs, which assists in impeding the importation of infringing goods. Registrations are also important in challenging infringing uses in social media like Facebook and Twitter, and to challenge registrations of infringing domain names. It would also not be able to prevent the use on television. Frequent watchers of The Colbert Report know that when the Superbowl was taking place the show was not allowed to use the trademarked name and instead referred all remarks to the “Superb owl” to avoid trademark infringement.
Further, without a registration, the team could not use the familiar trademark registration notice symbol ®. Thus despite the team’s available legal remedies under other state and federal laws, in view of the potential perception that the team had lost all of its trademark rights, it is possible that infringing goods would proliferate and licensing revenues could be affected.
Any final outcome is likely years away and public opinion now, rather than any legal arguments, may in the end play a greater role in resolving this dispute.