What’s in a name? The famous quotation uttered by Juliet in Shakespeare’s Romeo and Juliet has been oft-repeated many a time when evaluating the power of the name of a person or entity. When assessing the value of a name of a company it is wise to understand the consumer impression associated with said name. A name that offends members of the public usually does not deserve to be recognized as moral or trademark-worthy.
A trademark is a form of intellectual property that allows a consumer to identify the source of goods or services. This past Wednesday the Trademark Trial and Appeal Board of the United States Patent and Trademark Office canceled six trademarks belonging to the Washington Redskins football team, stating that said trademarks are offensive to Native Americans. While the Board clarified that it did not have the authority to preclude the football team from using the marks it did rule that the trademark registrations “must be canceled because they were disparaging to Native Americans.” According to the Board the threshold inquiry “is based on whether the evidence shows that a substantial composite of Native Americans population found the term ‘Redskins’ to be disparaging when the respective registrations issued.” The Board found that “petitioners [had] shown by a preponderance of evidence that a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with [the team]’s services during the relevant time frame of 1967-1990.” Because of this finding the Board required cancellation of the team’s trademarks.
The team will most likely appeal Wednesday’s ruling. Bob Raskopf, trademark attorney for the team, commented that the team is “confident [it] will prevail once again, and that the Trademark Trial and Appeal Board’s divided ruling will be overturned on appeal,” adding that the case “is no different than an earlier case, where the Board cancelled the Redskins’ trademark registrations, and where a federal district court disagreed and reversed the Board.” Mr. Raskopf’s reference to the “earlier case” points to a 1999 appeal wherein the United States Court of Appeals for the District of Columbia decided that the evidence to find “Redskins” to be disparaging to Native Americans was insufficient. The Court of Appeals also held that the claim against registration of the Redskins name was barred by “laches,” meaning the complainants had waited too long to bring a claim. The Redskins registered their nickname in 1967 and the claim was filed in the Trademark Trial and Appeal Board in 1992.
The Redskins marks will remain on the USPTO trademark register until the team has exhausted its appeals. But even if the name is not on the register it does not preclude the Washington football team from using it or taking action against others who use it without permission.
Cancellation of the trademarks means said trademarks will not receive the benefits of registration. These benefits include statutory presumptions of validity and incontestability. In addition, the name will no longer carry nationwide constructive use. This has the potential of tarnishing the team’s business as competitors may be able to manipulate the marks without the backlash typically associated with use of a Registered mark.
Significantly, there will also be palpable practical and monetary impacts. According to Mark P. McKenna, the Associate Dean for Faculty Development, Professor of Law, and Notre Dame Presidential Fellow at the Notre Dame Law School, two of the more grave economic consequences for the football team if the decision is not reversed include the inability of the U.S. government to seize imported goods bearing the cancelled trademark, “since only goods bearing registered trademarks are subject to forfeiture,” and the inability of the team to bring a claim for counterfeiting. This is because counterfeiting means making “making unauthorized use of registered marks.” And since the marks would no longer be registered counterfeiting law will not protect against any unauthorized use of them.
Perhaps this ruling, even if appealed, will bring about the change envisioned by the five Native Americans that brought the trademark cancellation proceeding: that of a name change by the Washington football team. The decision reminds us of the importance of the various more subtle issues attendant to most litigations and that courts can, and likely will, be sensitive and appreciative of societal attitudes, “feelings,” and the principle that aggrieved parties are entitled to their day in court. Looks like the Washington football team needs to be paying attention to various types of defensive and “offensive” schemes. More to come on this one.
-C. McHattie and N. Joshi