With the announcement June 18, that the US Patent and Trademark Office stripped the Washington Redskins of their trademark protection, one wonders, “What happens next?”
The decision by the Trademark Trial and Appeal Board found the team’s name and logo disparaging. It diminishes the Redskins’ legal protection against infringement and hinders the team’s ability to block counterfeit merchandise from entering the country.
So what does this mean? Is it open city on Redskins paraphernalia?
It’s definately a blow against team owner Dan Snyder who has been resolute in his refusal to change the team’s name saying it honors native Americans.
According to The Washington Post, financially the effect is largely symbolic. “The ruling cannot stop the team from selling T-shirts or beer glasses with the moniker or keep the team from trying to defend itself against others who try to profit from the logo. The trademark registrations also remain effective during any appeal process.”
Forbes.com says the NFL generates revenue estimated at more than $9Â billion annually. It estimated Redskins’ annual revenue at $373Â million, but was vague on how much of that comes from merchandise.
Federal trademark law does not permit registration of trademarks that “may disparage†individuals or groups or “bring them into contempt or disrepute.†The ruling pertains to six trademarks associated with the team, each containing the word “Redskin.â€
Blackenterprise.com spoke to Timothy J. Kelly, chair of the Trademark Practice Group, and partner at the law offices of Fitzpatrick, Cella, Harper & Cinto, which specializes in Intellectual Property Law. He gave insight on what the ruling means financially to Redskins merchandising.
What does this mean?
First point is they haven’t really been stripped. This is a process. They have avenues to appeal. Although the Trademark board has ordered the trademarks be canceled, they don’t get canceled until the appeals process is complete. It’s not a done deal. You should keep in mind that the Washington Redskins have already been down this road. The Trademark Trial appeal board already ruled once that these trademarks should be canceled and the NFL appealed and the district court reversed that decision. Now these new set of petitioners won, but they petitioned essentially on the same evidence that was reversed before. So it’s all still up in the air.
But if they canceled the registration can the Redskins still have trademark rights?
Because they canceled the registrations does not mean Washington Redskins football group or the NFL doesn’t have trademark rights in the term. They have common law trademark rights.
So can I just make a T-shirt now and slap on the Redskins name and logo and sell it on the streets?
RELATED: U.S. Patent Office Cancels Washington Redskins Trademark
No. First of all, it’s not the logos. These weren’t at issue here. The helmets with pictures of Indians, not at issue here. It’s the term Redskins. The marks are for the word. Although common-law rights are not necessarily as good as you get with a registration, I don’t think it’s a good risk for you to start making Redskins apparel because if the football organization were to go to court to try to force you to stop making counterfeit product they’ll probably win.
Are there any gray areas business-wise between this period where they have common-law rights but still in trademark protection limbo?
As far as Redskins merchandising, until the appeals process is over, I don’t think it means anything.
So all the celebrating by the petitioners, is it all premature?
I think there’s a lot more hype than there needs to be at this point in time. It’s still in the middle of the process.
Let’s say hypothetically, the Redskins organization loses the appeals process. I know they won their previous appeal, but what if they lose this time around. What happens to people who own Redskins apparel or merchandise?
That’s an interesting question. When they stop printing Kennedy dollars will it increase or decrease in value? It depends on the market. It’s a tough call. They’re not going to be “illegal” because they will have common-law rights in this term. They are not going to be able to take advantage of some of those rights that you get with a trademark registration, but assuming they want to continue to enforce this mark they have the ability to do that. Now
politically and from a public relations perspective it may be not too bright to do that. But again, that’s a ways a way. My feeling is that when the season opens they are going to be the Redskins. That’s for sure.So what does the common law protect you from as pertains to merchandising?
You get more benefits from a actual registration than you get from a common law. [With] common law trademarks you start acquiring rights in a trademark as soon as you start using the mark. If the Redskins were to take someone to court to try to stop the use of the term Redskins on unauthorized products they would have to convince the court that their mark was not disparaging and that they are entitled to trademark rights. How much deference the district court will give to the trademark trial and appeals board rule will be the question. Especially while the appeals process is still ongoing.