July 24, 2014

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Wyche Inside IP
By Terrell W. Mills

The Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office (“PTO”) cancelled six Washington Redskin football team trademark registrations that included the word REDSKIN on June 18, 2014.  The TTAB concluded that the word REDSKIN was derogatory to Native Americans at the time of registration and, therefore, it was proper to cancel the marks.  In essence, the TTAB is saying the marks should never have been registered and the PTO made an error in registering the marks.

As this is round two on the efforts to have the registrations for these marks cancelled, it is likely we will see a repeat performance of the appeal as well.  Until such time as the appeal is resolved, it seems unlikely that there will be any change in the team’s use of the marks unless political pressure to change the name becomes too great.

Assuming that the cancellation is upheld on appeal, what are the implications?  As the TTAB made clear in its opinion, this decision only affects the registration of the marks.  The TTAB has no authority to direct or control the use of the marks.  Therefore, the cancellation of the registration does not prohibit the team from continuing to use the marks.  Additionally, the team will continue to have copyrights in the marks and perhaps various common law trademark rights at both state and federal level arising from the many years of use by the team.

While the team will have various copyrights and maybe some common law trademark rights, practically the breadth of rights will be reduced.  With this reduction, the door opens for others to be able to use the marks in making and selling merchandise that the team cannot collect royalties from or prevent.  The willingness of companies to do this and the real amount of money at issue are unknown, as the boundaries of protection that the team may still enjoy are uncertain.  I think many of the larger, reputable merchandise companies will be wary to wade into these waters.

There is clearly more to come on this story that has already lasted 22 years.