This past week, the United States Patent and Trademark Office (USPTO) cancelled the federal trademark registration of the Washington Redskins based upon the belief that the team name and logo are disparaging to Native Americans. The Lanham Act contains the federal statutes that govern trademark law throughout the United States. Pursuant to Section 2 found therein, a federal trademark may be refused federal registration on the principal registration for a number of reasons, one being if the trademark “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute…” Based upon the 99-page decision of the Trademark Trial and Appeal Board (TTAB) espousing its reasoning, six trademarks, each containing the word “Redskin,” were cancelled.
Upon being informed about the TTAB’s decision, lawyers for the Washington Redskins immediately stated their intention to appeal, which they now have two months to complete. During the appeal, the team shall retain its federal trademark rights. While the football team’s loss of its federal registration may be overblown, in the event the team loses its appeal and, in turn, loses its federal trademark rights, it will suffer from the loss of a number of advantages, as listed herein, a byproduct of having federal protection.
Public notice of claim of ownership of a trademark / Listing in the USPTO’s online databases: One of the most important reasons for registering a trademark with the USPTO is that the trademark will then appear on trademark searches for a number of databases operated by the USPTO. This puts any person or entity looking to trademark a word, design, phrase, or combination thereof on notice that there may already be a similar trademark being used in commerce. This ability to deter third-parties from essentially poaching off the goodwill – either intentionally or by mistake – a registered trademark has worked hard to establish in the marketplace is further aided by the fact that the USPTO will refuse to register any similar marks that may lead to the likelihood of consumer confusion.
The removal of this advantage bestowed upon the Redskins may be of minimal magnitude due to the fact that the team’s name has been in use since 1933. Therefore, it’s undoubtable that the majority of the public (or at least the part of the population that has made the National Football League one of the most viewed weekly televised across the country) is aware that the any reference regarding the “Redskins” applies to the Washington Football Team. While it may be argued that the football team is no longer able to put any person or entity on notice that the word is already taken, due to the fact that the TTAB cancelled the application, it follows that any person looking to register the word, or something similar, in the aftermath of this ruling would be denied.
Legal presumption of ownership of the trademark and the ability to use the mark nationwide on or in connection with the goods/services listed in the registration: Ownership of a federal registration automatically shows that (1) the person or entity is the legal owner of the trademark; (2) the trademark is valid; and (3) the trademark is currently being used in interstate commerce. In order to be a valid trademark, the word, phrase or design must not be generic, merely descriptive, or confusingly similar to another. In the event the trademark is deemed merely descriptive, it may still be valid upon a finding that it has acquired “secondary meaning” in the marketplace. Secondary meaning is established when the purported trademark, through long use with a particular product, comes to be known by the consuming public as specifically pertaining to that product. A number of factors go into an assertion of secondary meaning, and this may be costly for a litigant to prove in court; thus a federal registration is a cost-efficient way of proving to the judicial system that the trademark is valid. Furthermore, as opposed to common law trademark rights, which limits trademark protection to the geographical region in which the particular word or phrase is currently being used, federal trademark rights allow the owner to use the trademark nationwide.
While the Washington Redskins may no longer be able to prove a legal presumption of ownership in the event of cancellation, due to the team’s association with the National Football League, this factor may already be established in the event the team seeks to litigate against any person or entity seeking to use its recently cancelled trademarks. Additionally, it is undeniable that any fan seeking to purchase merchandise associated with the team may walk into any athletic apparel store in any state and purchase a jersey or hat emblazoned with the team’s name and/or logo. Consequently, it follows that the team’s common law trademark rights regarding geographic protection may be substantially equivalent to that granted by a federal registration.
The ability to bring an action and recover damages in federal court: The owner of a federal trademark registration is granted the automatic right to sue in federal court. Pursuant to 28 U.S.C. § 1338(a), “[t]he district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks.” As a result, based upon the governance of the Lanham Act, federal courts have exclusive jurisdiction to hear any and all cases that pertain to federal trademarks. While it is true that common law owners of trademarks may still file suit in federal court, this requires a showing of diversity of citizenship between the parties and that the amount in controversy is over $75,000. Attorneys typically prefer bringing suit in federal court for trademark cases, as federal judges tend to have a better appreciation for this exquisite area of the law.
Furthermore, a federal registration allows the owner to recover monetary remedies not applicable in otherwise. These include: (1) the infringer’s profits; (2) statutory damages and costs; and, in cases of willful infringement (3) treble (triple) damages and attorney’s fees.
This federal protection may be the one that most affects the Washington Redskins. Any cases of infringement of the Redskins’ cancelled trademarks may be considered willful due to the fact that the person or entity already knows that they are associated with the football team. However, in the event the federal registration is no more, the team would not be able to obtain either treble damages or attorney’s fees. Furthermore, the ability to seek litigation in federal court would be entirely dependent upon where the infringing act is located and how much profit an infringer has received or the amount of profit the team has lost due to the infringement. Based upon the belief that the team would seek to immediately nip all infringement in the bud, the amount in controversy may rarely reach the quantity needed for federal court jurisdiction; this point also assumes that the infringed is located outside Washington D.C.
The ability to use United States registration as basis to obtain registration in foreign countries / the ability to record the United States registration with the United States Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods: An owner may use the date of his/her/its federal registration as the date of priority in another country for purposes of applying for trademark protection. This benefit is only granted if that country is a member of an international treaty such as the Paris Convention. In the event a trademark pirate seeks registration of the owner’s trademark before expansion actually occurs, the priority date will precede the date of the pirate’s registration and give the owner ultimate priority.
Furthermore, the absence of a federal registration disables owners of a trademark from seeking help from the United States CBP from trademark pirates overseas looking to make a buck by importing goods into the United States depicted with the infringing material. Even though this service is not automatic and in most cases the owner of the trademark has to assist the CBP with tracking the illegal activity, the lack of a federal registration completely disables the owner from utilizing this service.
In the event cancellation is upheld, those savvy to intellectual property law may seek to benefit from the Redskins’ loss by applying for trademark protection of the cancelled registrations overseas. This may be the route in which said individuals may seek for financial gain in the wake of the TTAB’s decision.
The right to use the federal registration symbol ®: Only owners with a valid federal registration are permitted to use the ® symbol. Use of this symbol provides would-be infringers with constructive notice that the trademark is claimed as an exclusive right for use. Therefore, any claim of innocent infringement would be per se invalid. This is important to the infringed party’s pursuance of treble damages and attorney’s fees for willful infringement. Stated differently, the use of the federal registration symbol would automatically allow a claim for willful infringement without the infringed party having to do extensive research and produce heaps of evidence for support.
As previously mentioned, the lack of a federal registration severely hinders the Redskins’ ability to recover a wide range of statutorily prescribed monetary remedies. The absence of a federal registration raises the expenses associated with protecting an owner’s trademark rights exponentially due to the extra factors needed to prove in front of a judge; the cost of applying for a federal registration is nowhere near close to the costs needed to prove one’s rights in court.