Hey, it’s been awhile! Sorry, extenuating circumstances every which-a-way . . .
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 are all sorts of reasons the decision isn’t what you’ve been led to believe it is. There are 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 get only 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 Redskins’ 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.
Importantly, the decision called only for the cancellation of six of the Redskins’ trademarks, all of which contain the word “Redskins,” and 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 both sides.
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 (“Hooters” 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 ongoing 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 first half.