What happened?
The Trademark Trial and Appeal Board cancelled several trademark registrations that Pro Football, Inc. owns for the Washington Redskins.
What does that mean?
In short, the Trademark Trial and Appeal Board is a federal court that only hears objections to trademark applications and registrations. It is based in the same complex as the United States Patent and Trademark Office. However, the TTAB only hears proceedings (which I always tell potential clients are lawsuits, because they are and many of the same substantive questions are answered in a TTAB suit as in a trademark infringement suit) that are about the registration of trademarks.
The TTAB only rules upon the registration’s validity, not the actual use of the mark.
So, does that mean there is no REDSKINS trademark?
Absolutely not. A trademark registration gives the owner some benefits. In federal court, there is no need to validate or quantify the trademark registration. Rebutting the registration would fall to the defendant. In federal court, there is no need to argue about the goods/services on the registration or the geography of the mark use – it is good in all 50 states and the various territories. With a trademark registration, the owner can ask a court for treble damages and attorneys’ fees in some situations. Also, in business deals, a registration is easy to point to. Instead of describing a trademark, an owner can just state that a licensee or other user of a trademark is subject to the conditions of a registration number.
However, without a registration, there are still valid trademark rights. Trademark practitioners call these “common-law” trademarks. State law generally protects these marks, although federal law can sometimes enter the picture, also. The big issue is that without a registration, a plaintiff would have to prove that the mark is valid and in which jurisdictions the plaintiff is using its marks. State law varies, so the damages proscribed by state laws will also vary.
In this case, the REDSKINS trademarks have been ruled to be invalid and should be cancelled. But there are still about 90 years of use of this mark. The general public knows and understands that “Redskins” is the name of the football team that represents the Washington, D.C. metropolitan area. There are probably millions of dollars of sales associated with these trademarks. There are probably millions of dollars of advertising spent on selling goods with these trademarks. We know that there are licensing deals (which are not immediately invalid) involving products with these trademarks. Therefore, the trademarks are still in use, still making money, and still have a hefty value. There is intellectual property to protect.
(One side note: I would not be surprised if the NFL or the Redskins corporation has surveys and data that show the marks are generally well-known to the public, creating famous trademarks, which means that the marks do get extra protection under federal law.)
The big loss for the NFL and the Redskins may be counterfeiting (if the ruling is not appealed and the mark is cancelled). Only marks registered with the United States Patent and Trademark Office may be intercepted at the border by Customs.
What is next?
On one hand, I expect the NFL and the Redskins to move on and hum along without any interruption. Pro-Football, Inc., will appeal the case. I expect that appeal to be filed within 30 days (this will stop the TTAB from actually cancelling the mark). Cases from the TTAB can be appealed either to a trial court (the previous case that cancelled the REDSKINS marks was appealed to the District Court for the District of D.C.) or to the U.S. Court of Appeals for the Federal Circuit. The timing will really depend on many factors.
Will this ruling stand?
Maybe. (I know, such a lawyerly answer.) The last case really turned on a concept called laches, which is legalese for, “Why did you wait so long?” Waiting to enforce any rights prejudices the defendant the longer the plaintiff waits. The last set of plaintiffs lost, ultimately, because they were adults and did not sue the second they turned 18 or 21 (the age of majority).
In this case, the set of plaintiffs were children. The lawyers for the plaintiffs used children who said they were offended by the REDSKINS trademarks because, technically, laches does not apply to minors.
Frankly, I expect this case to eventually be appealed to a Circuit Court. And, if you are really asking me which way this will turn out, I think the REDSKINS marks will be upheld because (pick one):
1) The marks were not offensive when they were first used and registered;
2) Laches will still apply to children whose marks were first used and registered about 90 years ago.
Update for 2020: Scandalous trademarks and offensive trademarks can register at the USPTO.
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