The Washington Redskins’ loss of its federal trademark registration was widely reported recently in major news outlets. Unfortunately, many headlines and reporters blurred some legal technicalities and it is interesting to note that the Redskins still have trademark rights. Those rights are just a bit limited now.
Trademark Rights Stem From Use
As we have said many times here, a business acquires trademark rights through actual use of a mark in commerce. A federal registration, while immensely beneficial, is not required to secure such rights.
In fact, once you begin using your mark in commerce you can claim common law trademark rights in that mark and you can use state courts to enforce your rights. Practically, it can be difficult to bring lawsuits in multiple states all at once, but it is possible.
The purpose of federal registration is to secure your rights nationwide and to obtain a few extra rights (listed in this post). What happened recently is the USPTO decided that the team’s registration (not its trademark) was not eligible for registration because it disparaged Native Americans. Thus, the USPTO did not say the team doesn’t own the trademark, it just said it can’t obtain a federal registration.
You Can’t Register Certain Marks
The Redskins registration was canceled because it disparaged Native Americans. Marks that disparage a significant population or which are otherwise scandalous may not be registered. But that’s not the only limitations.
The USPTO is also not allowed to register any marks that (a) are deceptive and might mislead consumers, (b) consist mostly of the US flag, (c) make use of a living individual’s name without his or her consent, (d) would likely cause consumer confusion, (e) use a geographic description that is false or misleading, or (f) make use of a surname.
What the Redskins Can Do Now
The Redskins are going to appeal the cancelation and may be able to reverse the cancelation. Regardless, even if they ultimately lose, they will likely continuing fighting and seeking individual court victories in which they can stop infringers. They can do this state by state by enforcing their common law trademark rights.
In the long run, however, those difficulties and the litigation expenses may prove too expensive and the team may end up changing its name if it can’t protect it using a federal registration.
If you have questions about whether your mark qualifies for federal trademark protection, be sure to contact Mighty Marks®!
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.