Cancellation of the Redskins’ Federal Trademark Registration: What does it mean?

by Kaamil Khan

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Last week, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office (TTAB) canceled six of the Washington Redskins’ trademarks for being disparaging to Native Americans. Although there is great controversy regarding the team’s name, there is also some confusion as to the full ramifications and effects of the TTAB decision.

Currently, what was canceled was the team’s federal registration of its “mark” under the Lanham Act. A mark means any combination of words, colors, and symbols that serve as an indicator of the source of goods and services. When people see your mark, you want them to immediately think of the items or products being sold under it. For example, Disney in its stylized font means the “happiest place on earth” while Coca-Cola is known for its refereshing soft drinks.

The benefits of registering with the U.S. Patent and Trademark Office is that there is a presumption that you own a valid mark which can be used nationwide. Further, you can prevent other marks from being used in the marketplace that may cause confusion or dilute from the uniqueness of your mark. Finally, you can recover damages when others use a mark that is too similar to yours.

You do not need to federally register your mark to use it nor to protect it. The “common law,” protections the law gives you based on your use of a mark, will still apply to unregistered marks. However, common law protection is not perfect. First, it is difficult to get national protection for your mark as common law is generally determined on a state by state basis. Secondly, while you can prevent another from using your mark in a misleading way, it is more difficult to block another person’s future registration of a similar mark as you lack the heavy presumption of ownership that federal registration gives you.

A famous case that illustrates the difference between common law versus federal protection is the Burger King case. Before the Miami-based “Home of the Whopper” became a national franchise, there was a small Burger King restaurant in Mattoon, Illinois owned by the Hoots family. The Hoots family had a state registration for the mark “Burger King.” Burger King of Florida, Inc., the Burger King most of us are familiar with, had a federal trademark.

The court found that even though the Hoots family had been using the “Burger King” mark before Burger King of Florida, the federal trademark allows for nationwide use and therefore trumped the state registration. The Hoots family could not use their mark outside of Mattoon, much less nationally, without infringing on Burger King of Florida’s federal mark. However, the court did recognize that the Hoots family had some common law rights in their mark. Therefore, Burger King of Florida cannot create a restaurant in the Mattoon, Illinois area without the Hoots’ permission, which the family denied.

So what does the TTAB decision mean exactly? First, the Washington Redskins is still the owner of the “Redskins” mark. It has been using this mark consistently since the 1930’s and has developed great common law protection in it in multiple states. Second, because of these common law protections, third parties cannot create their own Washington Redskins merchandise. The common law still protects you and your mark from being used in a misleading manner. If someone else creates merchandise with your logo, it implies a false relationship with you and your brand, the exact thing trademark law was created to protect against. Even without the federal registration, the Washington Redskins’ mark is famous enough that when people see it, they associate it with the NFL football team. Finally, the Redskins can continue to use the mark with its team. It can be used in advertising, clothing, uniforms, and other merchandise.

For opponents of the team’s name, this is a small victory but will not be enough by itself to cause a complete overhaul of the current Redskins name and logo.

If you have questions about protecting your business’ brand, K.M. Khan Law can assist you with your trademark registration or enforcing your common law protections. Contact the firm today.

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