The Washington Redskin’s have been under pressure to change the team’s name due to its disparaging connotation to Native Americans but the owner’s have refused to budge on any changes. To add to the controversy, today, the Trademark Trial an Appeals Board revoked the six of the Redskins trademarks ruling that the term “Redskins” was disparaging to “a substantial composite” of American Indians. If the team were to apply for federal trademark protection for “Redskins” today, it would most likely be denied. In fact, the team applied for other related trademarks over the last decade, including “Redskins Fanatics” and “Redskins Rooters” which were denied. However, as damaging as some might believe this ruling to be, it does not mean the Redskins must stop using the name. Unfortunately, losing the trademark may have little practical effect other than as a political message to the team that the term is a despicable racial slur.
To understand what effect this might have for the team owners, let’s consider the benefits received from having a federally registered trademark. First, federal trademarks have a legal presumption of ownership. If the Redskins find an infringement and sue, the owner is not required to prove by a preponderance of the evidence that the trademark is valid and protectable. However, proving validity for a national football team that has used the name since the 1940s would not be difficult. Other benefits, such as being able to use the U.S. registration as a basis for obtaining registration in foreign countries; the ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods; and the right to use the federal registration symbol ® may also have limited value. Foreign trademarks are already in place and not affected by this ruling. And, losing the ability to register with the CBP does not mean that Customs will allow counterfeit goods into the country.
“. . . if people wouldn’t dare call a Native American a ‘redskin’ because they know it is offensive, how can an NFL football team have this name?” – Amanda Blackhorse
The most prominent benefit, and the reason most organizations apply for federal registration, is receiving the exclusive right to use the trademark nationwide in connection with the goods/services listed in the registration. In other words, if the trademark owner finds an infringement, he or she can stop the infringer and receive compensation for the use. For the Redskins, even without a federal trademark, the team can still initiate an infringement lawsuit under common law, a term that refers to rights judicially created through state law cases. Common law trademark rights are limited to the geographic area in which the trademark is used so, for example, a company selling goods only in California cannot stop another from using their trademark in New York.
However, the Redskins are not selling goods locally or regionally, but nationally; their fans are everywhere so merchandise such as t-shirts and hats, are sold in every state as well as online. If a company in Florida sells Redskins’ merchandise without the team’s consent, they can be sued even though the team is based in Washington. While a federal registration may make the legal process easier, generating revenue from another’s intellectual property is still illegal.
As a practical matter, given the controversy surrounding the word, “Redskins”, it is highly unlikely that anyone at this point is going to use “Redskins” for their company name or product line. So any infringements are likely to be focused on counterfeit or unlicensed good, all of which can be handled through the common law system. As petitioner Amanda Blackhorse has stated; “The team’s name is racist and derogatory . . . I’ve said it before and I will say it again — if people wouldn’t dare call a Native American a ‘redskin’ because they know it is offensive, how can an NFL football team have this name?” The same is true for any company.
The team has vowed to appeal the decision and pending appeal, their Federal trademark is still in force. So while this decision does send a political message to the Redskins, the effect it has on the name as an Intellectual Property asset, is probably minimal. Will it cause the team owner to rethink his decision about changing the name? That certainly won’t happen until the appeal.