What’s in a name? Blackhorse v. Pro-Football, Inc.

The United States Patent and Trademark Office (USPTO) canceled six trademark registrations for the Washington Redskins. The plaintiffs in the case are five Native Americans who wanted to cancel registrations filed by, and issued to, the organization from 1967 and 1990. The 2-1 decision in Blackhorse, et al. v. Pro-Football, Inc. was announced today (June 18, 2014). The majority stated:

“[W]e decide, based on the evidence properly before us, that these registrations must be cancelled because they were disparaging to Native Americans at the respective times they were registered, in violation of Section 2(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a). This decision concerns only the statutory right to registration under Section 2(a). We lack statutory authority to issue rulings concerning the right to use trademarks.”

The team has two months to appeal it before the team loses its right to use the federally registered mark – an “R” in a circle or  ® on its goods or for services. The dissent, by Bergsman, Administrative Trademark Judge, stated that:

“I find that petitioners failed to show by a preponderance of the evidence that a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with respondent’s services during the relevant time frame of 1967-1990. Accordingly, the six registrations should not be cancelled under Sections 2(a) and 14(3)of the Trademark Act.”

The decision does not mean that anyone can use the mark – yet – and maybe not ever. Federal registration affords the trademark owner several benefits – including statutory damages and attorneys’ fees if a party is found to be infringing upon a federally registered mark. But there are other ways to protect a word or symbol which distinguishes a good or service under common law trademark.

A trademark is any word, name, symbol, or device or any combination of those things used by a manufacturer or merchant to identify goods and distinguish them from the goods manufactured or sold by others. The owner of the trademark has the exclusive right to use the mark to identify such goods and services and that right can continue indefinitely as long as the trademark is in use. Because a trademark can be established simply by using the mark in commerce, there is no requirement that the mark be registered with the USPTO and the mark is protected by common law trademark rights.

A trademark owner of a common law trademark can register the mark with their state including the District of Columbia, but those rights are usually limited to the geographic area in which the mark is used.

If you are considering adopting the still federally protected trademarks, do not be surprised if you receive a cease and desist letter from the football organization. Despite this legal blow, there are unfair competition and common law trademark causes of action which can be used to protect the common law trademark owner.

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