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Jim Astrachan: Redskins trademark loss doesn’t matter much

For those who are fans of both trademarks and the Washington Redskins, last week’s decision of the U.S. District Court for the Eastern District of Virginia affirming the cancellation by the United States Patent and Trademark Office of the Redskins mark may be real entertainment.

But what does it really mean? Not too much, because the cancellation of the federal registration for a mark in use since at least the 1960s has no effect whatsoever on the Redskins’ common law rights. Trademark rights arise only from use. Once the mark is in use, an owner can elect, as did Pro-Football, Inc., to register the mark with the United States Patent and Trademark Office, creating a presumption of ownership and additional rights such as the right to file the registration with U.S. Customs in an effort to prevent counterfeit goods bearing the mark from entering the United States.

Or, the owner can choose to rely on the common law to protect its mark against would-be infringers.  Both provide strong remedies.

Under the federal Lanham Act, the basis for trademark registration with the USPTO, a mark that degrades or denigrates a group or institution is not registerable. Although decades ago the Redskins mark was registered, Native Americans have claimed that the mark is disparaging of Native Americans and must be canceled. In an earlier decision of the USPTO, the Trial and Trademark Board agreed with the petitioners and ordered the mark canceled. The United States District Court for the District of Columbia disagreed, holding that the petitioners, among other reasons, waited too long and their petition was barred by laches.

In an action to cancel brought by new petitioners who had recently come of age to bring an action, the USPTO found sufficient evidence to rule that Redskins was a pejorative term when applied to Native Americans, despite the finding that there also were Native Americans favorably disposed to the use of the term. The district court affirmed the TTAB’s decision and Pro-Football, Inc. has announced an intent to appeal.

But even if Pro-Football, Inc. loses the appeal and the registration of the mark by the USPTO is canceled, Pro-Football, Inc. has not lost its right to call its club, and related merchandise, the Redskins, nor has it lost its right to prevent others from using the Redskins mark in a way that is likely to cause confusion or imply association of the infringer with, or endorsement of the infringer’s products by, the team.

Under the Lanham Act, a person whose mark is canceled will lose some statutory benefits, but some of these rights do not matter so much to the Redskins who have used the mark nationally for so many years.

For example, the club’s national use already provides nationwide protection of the mark. Common law protection is limited to those markets in which the mark has been used, but this mark has been used nationally.

While the Lanham Act provides protection preventing a challenge on the basis that a mark is merely descriptive five years following registration, this mark could easily withstand such a challenge; it is strong and distinctive.

Enhanced remedies against counterfeit goods are lost when the registration is canceled, but there are numerous other federal and state remedies available to the mark’s owner. Preemption of state regulations governing the use of the mark is probably not an issue unless some states try to enact legislation barring the use of Redskins. Finally, the owner may lose some benefits associated with using its registration to seek foreign registrations of its mark.

But the upshot of these decisions is that the use of the mark Redskins by Pro-Football, Inc., and its ability to prevent others from using the mark where use will likely cause confusion remains unchanged by these decisions. And the owner, despite cancellation should it happen, can still enforce its common law rights under the federal Lanham Act.  The real question is whether the National Football League will convince Pro-Football, Inc. that it is time for a change, in which case the royalties that will be earned from a change in name could support a large city.

Jim Astrachan is a principal at Astrachan Gunst Thomas, P.C. and an adjunct professor of trademark law at the University of Baltimore School of Law.