Don’t start making counterfeit Washington Redskins merchandise just yet

In recent years, the campaign against the team’s offensive name has gained considerable momentum, with even Senate Majority Leader Harry Reid publicly speaking out against it:

Despite this, I still think the team should change its name.  And a recent “landmark” decision by the U.S. Trademark Trial and Appeal Board, cancelling trademark registration of the “Redskins” name for its innate offensiveness, is being held up as a major step forward.

Tim Lince at World Trademark Review, however, says the decision is not nearly as big a deal as it seems.  The ruling is stayed pending appeal, and in any event, even if it were upheld the team would still have recourse against unauthorized producers of team merchandise:

Under the assumption that the REDSKINS term is now under no legal protection, hundreds of people on websites, social media and forums are saying, presumably mostly as a joke (but you never know!), that they will now start making unofficial REDSKINS merchandise in the wake of the decision. William McGeveran, associate professor at the University of Minnesota Law School, says he “wouldn’t expect the [trademark] team to police its marks any less aggressively as a result of this decision”, but affirms that “news reports suggesting that counterfeit Redskins jackets will now be legal are just plain wrong”.

WTR covered the original cancellation of the REDSKINS trademarks and subsequent overturning of the decision in 2003 and wrote about the case being dismissed in 2009. As Tim Kelly, partner at Fitzpatrick, Cella, Harper & Scinto LLP, notes, “the decision that the term REDSKINS was disparaging to a ‘substantial composite’ of Native Americans at the time the trademarks were registered is based on substantially the same evidence that was viewed as insufficient in the appeal of a prior proceeding”. Given this, the Washington Redskins’ lawyer Bob Raskopf’s gave a defiant response to yesterday’s decision: “We’ve seen this story before. And just like last time, yesterday’s ruling will have no effect at all on the team’s ownership of and right to use the Redskins name and logo. We are confident we will prevail once again.”

For now, the REDSKINS trademark registrations that are the subject of the cancellation proceeding will not be cancelled until the appeals process is exhausted. Kelly adds: “Importantly, the TTAB does not have jurisdiction to prevent the use of the marks it ordered cancelled. As such, the petitioners in the cancellation proceeding will need to seek a court order to prevent the NFL from using the name. An interesting question will be how much deference the courts will give to the decision of the board, an issue that the Supreme Court is already considering taking on, albeit in the context of a likelihood of confusion claim.”

[…]

Sommers notes: “Even if a court upholds the cancellation of the registration on appeal, the team will still have so-called ‘common law’ trademark rights arising from its long and consistent commercial use of the name. And those rights are very strong. They include the ability to stop other people from using the mark in a way that appears to be authorised by the team.” However, with media reports declaring that the trademarks are cancelled, readers could interpret that as a free-for-all to capitalise on the REDSKINS brand. Job one for the team’s trademark department, then, is managing that information flow. After all, any spike in infringing activities will mean that the trademark team’s policing burden gets heavier.

Anyone else think it’s no accident that the anti-“Redskins” campaign picked up steam after litigious bully (and bad free-agent picker) Dan Snyder bought the franchise?

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