What will be impact of the July 8, 2015 affirmation of the cancellation of the “Redskins” trademark registration ? The “ Redskins” mark was first used by the “Washington Redskins” National Football League (“NFL”) franchise in 1933 when then owner George Preston Marshall selected the name while the team was located in Boston, Massachusetts. “ Redskins” was chosen to distinguish the football team from the Boston Braves professional baseball team. According to ProFootball, Inc. (“PFI”), the current owner of the registrations, “At the time the name ‘Redskins ’ was chosen for the team, four players and the team’s head coach identified themselves as Native Americans.” The team has used the name ever since. The United States Patent and Trademark Office (“PTO”) approved and registered the mark in 1967. Five additional variations of “ Redskins” trademarks were approved and registered between 1974 and 1990 (collectively “ Redskins Marks”).
As the federal judge in the Eastern District of Virginia noted “what is at issue in this case—trademark registration, not the trademarks themselves. It is the registrations of the Redskins Marks that were scheduled for cancellation by the TTAB’s decision, not the trademarks. In fact, the TTAB itself pointed out that it is only empowered to cancel the statutory registration of the marks under Section 2(a); it cannot cancel the trademarks themselves. See Blackhorse v. ProFootball, Inc., (citation omitted).”
As the court noted, a trademark is any word, name, symbol, or device or any combination thereof used by any person to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. Federal law does not create trademarks. Regardless of whether a mark is registered, the “right to a particular mark grows out of its use, not its mere adoption. To acquire ownership of a trademark it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services Thus, use of a mark in commerce, by itself, creates a host of common law rights. (Citations omitted)
However, trademark registration provides a number of important rights beyond those arising from common law, namely:
(1) constructive notice of the registrant’s claim of ownership of the trademark;
(2) prima facie evidence of the validity of the registration, of the registrant’s ownership
of the mark, and of his exclusive right to use the mark in commerce as specified in
(3) the possibility that, after five years, registration will become [incontestable] and constitute conclusive evidence of the registrant’s right to use the mark;
(4) the right to request customs officials to bar the importation of goods bearing infringing trademarks;
(5) the right to institute trademark actions in federal courts without regard to diversity of citizenship or the amount in controversy; and,
(6) treble damage actions against infringing trademarks and other remedies.
The Washington NFL team (PFI) had challenged a 2014 Trademark Office ruling on a cancellation petition filed against the “Redskins Marks” in 2006 by Amanda Blackhorse, Marcus BriggsCloud, Phillip Cover, Jillian Pappan, and Courtney Tsotigh (“Blackhorse Defendants”). The Trademark Trial and Appeal Board found that at the time of their registrations the marks consisted of matter that both “may disparage” a substantial composite of Native Americans and bring them into contempt or disrepute. Thus, the registration was found to violate Title15 § 1052(a) of the US Trademark Law. However, as the court noted the ruling is not a free speech issue, because “cancelling the registrations of the Redskins Marks under Section 2(a) of the Lanham Act does not implicate the First Amendment as the cancellations do not burden, restrict, or prohibit PFI’s ability to use the marks.” Thus, although PFI will not have the enhanced rights noted above, the team can still be called the Redskins, the services and goods approved by PFI can still be sold under the Redskins trademarks, the Redskins fans will still be able to cheer for their Sunday afternoon heroes as they scrimmage against the Giants, Cowboys, Raiders, Chiefs, Packers, Saints, Patriots, or Buccaneers, and PFI and the Blackhorse Defendants will likely carry the fight over the registration to the next level of the federal courts.