This article originally appeared in the 7.10.14 issue of Metroland
Hey, it’s been awhile!
Sorry, extenuating circumstances every
Anyway, there was all sorts of rejoicing a couple of
weeks ago when a panel of administrative judges at the Trademark Trial and
Appeal Board (a quasi-judicial branch of the Patent and Trademark Office) ruled
that six trademark registrations owned by the Washington Redskins football team
should be canceled.
The ruling was
pursuant to a provision of federal trademark law “which prohibits registration of marks that may disparage persons or
bring them into contempt or disrepute.”
The import of this decision has been misreported almost everywhere, and there’s
all sorts of reasons the decision isn’t what you’ve been lead to believe it is
and even reasons to hate the decision altogether.
First of all, the
decision doesn’t stop the Redskins from using the name Redskins. Trademark rights arise upon the use of a mark, and the Redskins have
been the Redskins for a long time.
Federal trademark registration is something you can only get once you’ve
started using the mark, and it provides you with stronger protections in the
form of a public record of your mark, a presumption of ownership, better
damages if you’re infringed, etc. But that’s about it.
Second, the decision
doesn’t mean everybody can run around making money off the Redskin’s
trademarks. They can’t. The Redskins mark is famous, about as famous
as a mark can be, and there are substantial statutory and common law
protections for famous marks, even if they are unregistered. There are a few more hoops to jump through
and maybe some remedies that aren’t as readily available. But I suspect there are going to be a lot of
get-rich-quick idiots out there who are in for a rude awakening when they start
marketing Redskins merchandise thinking they’re immune from getting sued.
decision only called for the cancellation of six of the Redskins’ trademarks,
all of which contain the word “Redskins”, and that protect the mark only for
presenting football games, except for the mark “Redskinettes”, which is for
“entertainment services” in the form of cheerleaders. I’m not making this up.
The decision did not cancel six other trademarks owned by the Redskins organization, including
three trademarks for the Redskins logo – the silhouette of an American Indian
chief (years ago I asked a South Dakota government official in charge of
“Indian Affairs”, herself a prominent member of a Sioux tribe, how her people
referred to themselves. She rolled her
eyes and said “Indian. Always.”) that is
on the Redskins helmets. Got that? The
Indian head logo is still a federally registered trademark of the Washington
Redskins, and it protects use of the logo for such things as the presentation
of football games and a whole bunch of merchandise-y things.
This case was far from
a slam-dunk. If you think otherwise I
suggest you find the decision online and read the lengthy dissent (it was a
two-to-one vote). I’m not saying I disagree
with the decision, but I am saying there were very interesting arguments on
The fundamental problem
I have with all of this is that the law the decision is based on sets up the
Patent and Trademark Office, a faceless bureaucracy if there ever was one, as
an arbiter of political correctness, good taste, and moral propriety. While what they do falls far short of
censorship (like I said before, the PTO doesn’t have the power to stop anyone
from using any kind of trademark, it can only block registration), it still reeks
of governmental meddling where it probably doesn’t belong. Not surprisingly, the PTO’s (and the courts’)
history of applying this law is inconsistent and contradictory (“Hooter’s” is
OK; “HEEB” for a magazine published by Jewish scholars, isn’t; “Squaw” for
clothing is not OK, but “Squaw” for ski-related goods is; “Dykes on Bikes” is
OK for street festivals; “Black Tail” is OK for a nudie magazine featuring
women of color).
I think the PTO (and
the federal government in general) should just stay out of this morass.
So, what happens
now? It sure ain’t over, that’s for sure. The Redskins can appeal the decision to a
federal court, where litigation (including more appeals) can drag on for
years. I’m sure that they’ll appeal
this, and I wouldn’t bet against them overturning the decision.
The biggest import of
the decision, of course, is the intensifying of the on-going public relations
debacle the Redskins are in. This debate
has been raging for decades, and the team’s fans are some of the most notoriously
passionate in all of sports. It’s bad
enough to have the President suggest the name be changed; it’s another thing to
have a judicial body, applying the law, find the name not worthy of federal
protections. Legalities aside, it’s time
for the team to change its name and move on.
Paul Rapp is a local
entertainment attorney who believes the second half of his 2014 is going to be a lot better than his