The United States Patent and Trademarks Office (USPTO) has today ordered that six Redskins trademark registrations be cancelled on the basis that they are "disparaging to Native Americans".
Five Native Americans initiated the cancellation proceeding pursuant to the U.S. Trademarks Act, which "prohibits registration of marks that may disparage persons or bring them into contempt or disrepute."
There has been some talk that the registrations have been cancelled, that the Redskins have lost all their trademark protection and that anyone can now go out and start selling Redskins merchandise without the permission of the team.
All that is wrong.
The trademark registrations have not been cancelled as of yet. The ruling was to cancel the registrations, but they remain in good standing, and will for some time. Challenging the decision will buy the Redskins time. The team will appeal the decision, and in the meantime, the trademark registrations will remain active. The Redskins can appeal the decision to the Court of Appeals for the Federal Circuit. They may also start a court action in District Court for the District of Columbia. They may also request reconsideration of the decision with the USPTO.
Expect the Redskins to take its case to District Court since that will give them the opportunity to introduce new evidence. At the Court of Appeals level, they can't submit new evidence; rather the court is stuck with the record from the original hearing.
On to the big issue: does the cancellation mean that the Redskins lose their trademark rights?
The ruling to cancel the trademark registrations does NOT strip the team of its trademark rights or its ability to stop unauthorized parties from using the Redskins marks.
The Redskins have acquired what are called common law trademark rights. These are trademark rights that arise by virtue of the use of the mark in the marketplace. By "use", I mean things like jersey sales and the mark appearing in TV broadcasts and online.
And here's the key: common law trademark rights are enforceable and the Redskins could rely on them to stop a third party from making unauthorized use of its marks.
This means that the team does not need a trademark registration to stop someone from making unauthorized use of its marks. Common law rights can be relied upon to do just that. While there are important differences between registered and common law trademarks as far as scope of protection, the fame of the Redskins mark together with national sales and use place the Redskins in a good position to stop others from using their marks.
So if some guy in Wisconsin starts selling product with the Redskins trademark on it without the permission of the team, he should expect to receive a cease and desist letter from the team, and failing his agreement to stop, he could face a lawsuit.
Apart from trademarks, the Redskins could also sue for copyright infringement if someone makes unauthorized use of their logo or stylized word mark. The decision of the USPTO relates only to trademarks and has nothing to do with copyright.
While the potential cancellation is not fatal to the ability of the Redskins to enforce their rights, this is yet another blow to the Redskins team name. The pressure on the team and league to change its name continues to mount with no end in sight. Indeed, the question may not be if the team changes its name, but when.