The big news from yesterday was that a Federal Judge upheld the Trademark Office’s decision to cancel the WASHINGTON REDSKINS trademark but there are many misconceptions about the Redskins’ trademark dispute.
On June 18, 2014 the Trademark Trial and Appeal Board (“TTAB”) of the U.S. Patent and Trademark Office decided in the case Blackhorse v. Pro Football, Inc. to cancel six federal trademark registrations containing the term “Redskins”. The trademarks were cancelled because they were deemed disparaging to Native Americans.
After the TTAB’s decision against them, the Redskins sought to overturn the decision by suing Blackhorse and the four other Native Americans behind the cancellation proceedings. Yesterday, the Judge upheld the TTAB’s decision holding that the mark was disparaging and not entitled to protection at the Trademark Office.
So what does it really mean if the trademarks are cancelled? Below are some common misconceptions about the cancellation:
1.* The Washington Redskins trademark was cancelled.FALSE. Many headlines from news state this today but this is not entirely true. The Redskins can appeal the decision and while the appeal is pending, the trademarks remain registered.
The Washington Redskins will be forced to change its name.FALSE. Just because the trademarks are cancelled doesn’t mean the Redskins have to change its name. Many trademarks are utilized without being federally registered and they are entitled to protection.
I can print up Redskins shirts and not get sued for trademark infringement*. FALSE. Like stated above, non-registered trademarks are entitled to protection. But, if the mark is no longer registered the fake shirt is not considered a counterfeit. A counterfeit can only be of a registered trademark in the same class. When something is a counterfeit, the Lanham Act allows statutory damages up to $2 million per mark infringed and the award of attorneys’ fees in cases. This is great incentive to have a mark registered as it deters others from infringing the mark.
4. *The First Amendment should protect calling the team the Redskins. *TRUE. While the Redskins will not be forced to change its name, because something is protected speech doesn’t mean it is protected at the Trademark Office. The Trademark Office does not allow the registration of vulgar and disparaging marks. This is why the WASHINGTON REDSKINS mark lost its protection.
The battle over the WASHINGTON REDSKINS trademark will continue in court and the court of public opinion.