USPTO Cancels Washington Redskins Trademark Registration
NFL Franchise to Appeal Decision
The Trademark Trial and Appeal Board—an independent administrative tribunal within the United States Patent and Trademark Office—canceled six federal trademarks of the Redskins team name in a 2-1 decision Wednesday. The board explained the petitioners in Blackhorse v. Pro Football, Inc.. carried their burden of proof, by a preponderance of the evidence, demonstrating that the term “Redskins” was found to be “disparaging” of Native Americans at the respective times the marks were registered.
TTAB explained that while Pro Football, Inc., the owner of the involved registrations, asserted as a defense that the petitioners should have been barred from seeking cancellation because the registrations have existed for so long, and been the subject of significant investment, the defense was inapplicable to the petitioners in this case.
This ruling does not force the NFL or Redskins’ owner Daniel Snyder to change the team’s name. The decision strictly means that trademarks registered between 1967 and 1990 will no longer be protected under federal law if the NFL and the Redskins lose an appeal to the U.S. District Court. The registrations will remain “on the federal register of marks” and not be listed in the USPTO’s records as “canceled” until after any judicial review is completed.
Bob Raskopf, trademark attorney for the Washington Redskins, has already vowed the team will appeal the Board’s divided ruling in a statement made shortly after the decision. Raskopf said “We’ve seen this story before. And just like last time, today’s ruling will have no effect at all on the team’s ownership of and right to use Redskins name and logo,” citing rulings in 1999 and 2003. “We are confident we will prevail once again, and that the Trademark Trial and Appeal Board’s divided ruling will be overturned on appeal.”
According to a TTAB fact sheet, benefits of federal registration include the legal presumptions of ownership and of the nationwide scope of rights in these trademarks; the ability to use the federal registration symbol; and the ability to record the registrations with the U.S. Customs and Border Patrol Service so as to block the importation of infringing or counterfeit foreign goods. Losing the federal registration benefits of a trademark does not necessarily mean that the owner loses all legal rights in the mark. TTAB determines only whether a mark can be registered with the federal government, not whether it can be used. The mark owner may still have rights in the mark based on use (common law rights) and those use-based rights may continue to exist even if federal registration is canceled.