The Washington Redskins Trademark Controversy - Part I

Given the recent controversies over the Confederate Flag in South Carolina, as well as the recent SCOTUS decision regarding Confederate Veterans and license plates in Texas, and the alleged implications of these outcomes on the Washington Redskins trademark controversy, I've been building toward a post on the subject.  However, before I could get there, Federal District Court Judge Gerald Lee affirmed the decision of the US Patent and Trademark Office (USPTO) and its Trademark Trial and Appeal Board's (TTAB) decision to cancel six of the trademark registrations the franchise possesses for "Washington Redskins".  So, the time is right for some analysis and critical comment on this very recent decision and the related decision(s) and commentary that have come before. As one might expect, this will be a multi-part post, as one entry will simply not be sufficient to cover all the ground necessary to explain why, in the opinion this author, the USPTO and the Federal Courts have got it wrong so far.  If this is a nation of laws (as is said), then both the TTAB and the Federal Court for the Eastern District of Virginia (E.D. Va.) (and Judge Lee) have ignored that principle because trademark law and judicial precedent say one thing on the standard to apply while these tribunals have misstated, misapplied, and wrongly analyzed the law and doctrine at issue.

Moreover, and as a threshold gripe, the reporting on this matter continues to miss the mark.  Like the TTAB and federal court(s), the news agencies misstate or simply miss the real, relevant issues in analyzing a cancellation proceeding for alleged disparaging marks.  Rather than focus on the appropriate legal standard, the news (and the tribunals), have focused on the term "Redskins" completely devoid of the use of the term in commerce, which is required.  Moreover, to cancel such a mark, significant evidence must be marshaled that shows a substantial composite of the group allegedly disparaged finds the term disparaging.  As was the case in the original Washington Redskins trademark row (Harjo), which took more than 13 years to resolve (in favor of the NFL franchise), there simply is not significant evidence of such disparagement.  Yet, the tribunals have lurched and groped to find "evidence" deemed sufficient to cancel the marks.

In addition, the news reports have been inadequate in describing what will result even in the unlikely event Washington's marks are cancelled.  For example, the Washington Post asserts that the franchise would still have state law rights in the trademarks - but that is not only an incomplete answer, but an answer/option that if far less valuable for the franchise.  Although state law may provide some protection(s), the franchise will still have very valuable rights under the federal trademark statute - the Lanham Act.

Unlike patents and copyrights, trademarks do not derive value and become a legally protectable asset until the mark(s) is/are used in commerce.  For federal protection via the Lanham Act, that use must be in interstate commerce.  However, federal protection is not contingent upon registration; rather, the Lanham Act protects unregistered trademarks as well (under Sect. 43(a) of the act - 15 USC Sect. 1125).

Some commentators have questioned whether a mark previously registered and then cancelled because of offensiveness or disparagement would then enjoy trademark protection under the unregistered provision of the Lanham Act.  It is an interesting question, and there is no substantive precedent in this area, so it would be a case of first impression with any court that is forced to set over this matter.  This, and other issues, will be reserved for subsequent parts to follow.

In part 2, the next entry will explore my reason and rationale for finding the TTAB and federal court decisions in error.