Many people seem confused by the decision of the US Patent & Trademark Office to rescind the registered trademark “Redskins” owned by the Washington football team [an enhanced version of the Trademark Trial & Appeal Board opinion is available to lexis.com subscribers]. So let’s try to analyze it in my usual three paragraphs. For those who don’t know, there has been a decades old battle to get the team to stop using the name which many feel is offensive to Native Americans. In the 1990s a court declared the trademark invalid, but that was reversed on appeal, the court claiming there was not enough proof of the name’s disparagement and that it took too long for the case to be brought (a legal doctrine called “laches”).
This latest decision probably also will be appealed, judging by comments of their lawyers. But note that the decision does not require the team to stop using the name. There are two types of trademark rights. One set you get through a “registered” trademark (when you see the “r” in a circle after a mark) that the USPTO lets you have. There are many benefits to a registered trademark including a presumption in your favor if you sue anyone for infringement. But without a registered mark, if you can prove you used a mark before others in a particular class of goods or services, you can still use it and exclude others from using it. These are called “common law” trademark rights (when you see a “TM” after a mark).
Another advantage of a registered mark: apparently the team will have a harder time stopping counterfeit merchandise from foreign countries, since Homeland Security requires you to have a registered mark. But other than that it seems the team could go on using the name. Should they? Well that’s for others to decide. Things that are not accepted now but were 30+ years ago should be carefully examined for sure. And hate speech in general is never good. But we just have to be careful not to let the PC police send us all down that famous slippery slope. I found this on the Web: “A UK recruiter was stunned when her job advert for ‘reliable’ and ‘hard-working’ applicants was rejected by the job centre as it could be offensive to unreliable and lazy people.” Really? Don’t know, what do you think?
Read additional articles at the David Feldman Blog.
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