See more posts by this author: Kameron W. Kramer
No More Trademark Protection for the Redskins?
Just Wednesday, June 18, 2014, the United States Patent and Trademark Office canceled the Washington Redskins’ trademarks. The USPTO called the team’s name “disparaging to Native Americans.” The case was filed on behalf of five Native Americans, over eight years ago.
Before you start manufacturing apparel though, the NFL is appealing the decision and the trademark protection remains in effect until the appeal is decided.
Trademark protection is incredibly important in the entertainment industry, and especially in the NFL where merchandise sales account for a large amount of revenue. As it turns out, from April 1, 2012, to March 2013, Robert Griffin III, quarterback for the Redskins, jerseys were the highest selling single player’s jerseys in history. That means that the Redskins trademarks are valuable. These jerseys would not have been able to generate revenue for the NFL if the NFL had not been able to control who made them with its trademark ownership.
Without trademark protection, anyone can make a Redskins logo and legally sell it, or produce merchandise that mimics the likeness of the team without any risk of federal trademark infringement. However, even with the loss of trademark protection, state and common law may still protect the NFL’s exclusive use of the name and logo, but it is not clear.
The impact of not having ownership of the trademark not only affects the Washington Redskins and their owner Daniel Snyder, but the entire NFL, because all of the teams except for the Dallas Cowboys share in the profits from merchandise. Although the ruling does not force Snyder to change his team’s name, the financial impact the decision will have on the NFL may force the name change. However, even if the team did change its name, the old Redskins logos and name may never be protected again, and it represents a loss of future revenue for the NFL either way.
Morals, Scandals and Technicalities in Trademark Law
Registering a trademark that may “disparage” a group is not allowed under federal trademark law. “If it was any other ethnic group there would be an outrage,” stated one of the Plaintiffs in the case, Amanda Blackhorse. The relevant portions of Section 2 of the Trademark Act (15 U.S.C. 1052) provide as follows:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it -(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute[.]
The trademark should have never been granted according to Wednesday’s decision because the trademark does not qualify for protection under this part of the statute.
The law surrounding trademarks is very technical, and a similar challenge was brought before. In that case, the arguments were similar. In the case filed in the 1990s, the Plaintiffs argued that the term “redskin” has always been, and still is, a racial slur, as well as offensive. The Defendants argued that the term was only denotative, and was interchangeable with the term Indian.
The court heard everything from linguistic experts to simple dictionary definitions to film experts as evidence of the meaning and history of the word redskin. The court had to decide if the trademark was a scandalous matter, which is an admittedly vague legal framework. Scandalous to who? It does not have to be a majority, but must be a substantial composite of the general public in the context of contemporary attitudes. The court held it was not scandalous, but was disparaging.
What became important for the court to consider was if the term “Redskins” in reference to the NFL team had taken on new meaning separate from the term “redskin” as it had been historically used. The court held it did not, and currently the term referred both to the football team and an ethnic group. The issue is narrow in the sense that “Redskins” was found to be disparaging in its current usage in connection to the football team.
Although the Plaintiffs won in front of the Trademark Trial and Appeal Board in the earlier case in 1999, the case ultimately was overturned on appeal in 2005 because the Plaintiffs lacked standing. The Plaintiffs were essentially too old and should have brought the case sooner, closer to the time the trademarks were registered.
In Wednesday’s decision, the court again did not rule on the scandalous matter section of the statute, but on the disparaging section of the statute. The court did not just consider the word “redskin,” but also the other parts of the trademarks in question. The trademarks that the USPTO canceled do not include the current Redskins’ Logo, but do include all trademarks registered between 1967 and 1990, and that includes all marks containing the wording “Redskins.”
The team is again appealing the decision, so its trademarks are still protected while the appeal is pending. This time it seems less likely that the appeal will be overturned on the issue of standing, since the Plaintiffs are all younger, and brought the action as soon as they reached the legal age that they could bring the action.
The ruling on appeal could still be many years away.