First Amendment Intellectual Property

What’s in a Name

Who’s excited about football being back in full swing? Me. As I watched with excitement during week 1 my eyes were particularly fixed on FedExField and the Washington Redskins. I’m a fan. I’ve been one since I can remember and, no matter how many times they let me down, I’ll probably be one until the day I die. As my dad and I watched Sunday’s loss with sheer frustration, my dad said what he (and many others) have been saying for years, “We’re cursed! They need to change the name or we’ll never win.” Many of us fans (and even the non-fans) agree. But you know who doesn’t agree, Dan Snyder, the owner of the Redskins, and Pro-Football, Inc. (PFI), the company that owns the Redskins trademarks and operates the Redskins. They have been battling the U.S. Patent and Trademark Office (USPTO) and in federal district courts since 1992 for the right to continue to receive trademark protection for the longstanding Redskins name and logos. Most recently in July, the Redskins took a big “L” in federal court when a judge upheld the cancellation of the Redskins’ trademark registrations.

Before I explain the judge’s basis for upholding the cancellation, let me explain why the trademarks and registrations are important in the first place. The USPTO defines a trademark as a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. Trademarks help owners distinguish their products from other similar ones on the market; McDonald’s has the golden arches and Chili’s has the giant chili pepper. Anyone can create and use a trademark, but registration protects that trademark from being used by another. Registration establishes nationwide ownership and ownership rights, such as the right to license the trademark to another company for temporary use. Registration allows the trademark owner to use the ® symbol in conjunction with the trademark to let others know that it is registered. Trademarks registered with the USPTO can be registered with U.S. Customs and Border Patrol who will block the importation of infringing or counterfeit goods. All this means that trademark registration helps owners prevent loss from people who want to steal their products and their brands.

So, why can’t the Redskins receive registration protection anymore? There’s this important law called the Lanham Act (15 U.S.C. §§1051 et seq.) that establishes the basis for our nationwide trademarking system. While there is general freedom to register trademarks that don’t infringe on others’ trademarks, there are exceptions. The exception at play here is found in Section 2 of the Lanham Act and states in part that a trademark will be refused if it, “may disparage…persons, living or dead, institutions, beliefs, or national symbols….” 15 U.S.C. § 1052(a). The group of Native Americans challenging the Redskins’ registrations argued that the term “redskin” and the Redskins’ trademarks disparaged Native Americans. PFI argued that there wasn’t enough evidence to prove that to be true.* Judge Gerald Bruce Lee sided with the Native Americans. Judge Lee stated that “(1) dictionary evidence; (2) literary, scholarly, and media references; and (3) statements of individuals and groups…show that the Redskins marks consisted of matter that ‘may disparage’ a substantial composite of Native Americans during the relevant time period.” Therefore the trademarks violated the Lanham Act and were to be cancelled.

Now that we know why the USPTO and Judge Lee ruled the Redskins don’t deserve their trademarks, what gives? Why did we watch the Redskins play the Miami Dolphins in the same uniforms with the same logo and the same name? Three reasons. First, the Redskins have appeal rights and appeals take time. Until the franchise exhausts its appeal rights, the USPTO won’t officially cancel their trademarks. Second, even if the trademarks are cancelled, PFI can still use the current Redskins name and logo. They just won’t have trademark protection, which prevents others from using those markings. People could potentially “bootleg” Redskins apparel and goods with no legal repercussions, and cut into PFI’s and the NFL’s revenue. Third, all hope of legal protection is not lost. Even without trademark registration, common law (the law established through judicial decisions rather than legislative acts) might protect PFI and the NFL from individuals and groups who may want to counterfeit Redskins’ goods. Since the situation isn’t as dire for the Redskins as it may have initially appeared, we may not ever actually see a name change; trademark registrations or not. I’ll be sure to keep my eyes peeled for the 4th Circuit Court of Appeals’ decision on PFI’s appeal and keep you guys up-to-date.

*PFI also argued that Section 2 of the Lanham Act violated the First and Fifth Amendments. Judge Lee disagreed. You can read his full opinion here, and if you’d like me to break down the law and rationale for that part of the decision, let me know in the comment sectio