Can Your Trademark Fall?

On October 3, 2016, the Supreme Court denied a Petition for Writ of Certiorari Before Judgment in Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439(E.D. Va. 2015), leaving the lower court’s decision to cancel six federally registered trademarks assigned to the Washington Redskins. Pro-Football, Inc. v. Blackhorse, et al., cert. denied, (U.S. Oct. 3, 2016) (15-1311). The case arose when the United States Patent and Trademark Office (“USPTO”) refused the registration of six Redskins’ trademarks on the grounds that they disparage “persons, living or dead, institutions, beliefs or national symbols.” The Redskins noted in their appellate brief that while over three million trademarks have been registered since 1870, no registration has ever been retroactively cancelled for being disparaging.^[1] The trial court rejected these arguments.

A trademark is “any word, name, symbol, or device or any combination thereof used by any person to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S. Ct. 2753, 120 L. Ed. 2d 615 (1992). Federal law does not create trademarks. See In re Trade-Mark Cases, 100 U.S. 82, 92, 25 L. Ed. 550, 1879 Dec. Comm’r Pat. 619 (1879). Regardless of whether a mark is registered, the “right to a particular mark grows out of its use, not its mere adoption….” United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97, 39 S. Ct. 48, 63 L. Ed. 141, 1918 Dec. Comm’r Pat. 369 (1918) (citation omitted); see also Emergency One, Inc. v. Am. Fire Eagle Engine Co., 332 F.3d 264, 267 (4th Cir. 2003).

The owner of a trademark can apply to register it with the USPTO under the Lanham Act. See 15 U.S.C. § 1051. After reviewing an application, “[ if ] a trademark examiner believes that registration is warranted, the mark is published in the Official Gazette of the PTO” as well as the Principal Register. B & B Hardware, Inc. v. Hargis Indus., 135 S. Ct. 1293, 1300, 191 L. Ed. 2d 222 (2015) (citing 15 U.S.C. § 1062); see also 15 U.S.C. § 1057.

Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of goods and/or services.^[2] If a trademark owner is able to prove infringement, a court can order the infringer to stop using the accused mark, issue an order requiring the destruction or forfeiture of infringing articles, provide monetary relief, including the profits from the infringing mark, damages sustained to the owner, and can even force the infringer to pay the owner’s attorneys’ fees^[3]. This can be a very effective way to remove a business’ competition, remain well-known, and be awarded significant monetary recovery in certain cases.

A business would be well advised to consider how its trademarks are viewed under contemporary morals, fairness, and values. The “Washington Redskins” name has been contested for decades. The original “Redskins” mark was first used by the “Washington Redskins” National Football League (“NFL”) franchise in 1933 when then owner George Preston Marshall selected the name while the team was located in Boston, Massachusetts. “Redskins” was chosen to distinguish the football team from the Boston Braves professional baseball team.[4] For example, in 1971 and 1972, there were a host of newspaper articles detailing opposition to the name “Redskins” by some Native Americans. Similarly, in 1972, Leon Cook, President of the National Congress of American Indians (“NCAI”), among others, met with Edward Bennett Williams, the President of Pro Football, Inc., to explain that the team name was a slur; Williams reported the meeting to the NFL Commissioner the following day. Also, a 1972 official game program referenced the controversy surrounding the team’s name. The registrability of the Redskins’ marks has been litigated for over two decades. Previous litigation resulted in a ruling that the controversy was time barred.[5]

Examples of the Redskins Trademarks

The issue before the Court was the registration of the Redskins’ marks and the benefits associated with registration, not the use of the marks. The Court found that the federal trademark registration program is not commercial speech. Commercial speech is defined as “speech that does no more than propose a commercial transaction.” Both the Blackhorse parties and the United States of America, argued that the federal trademark registration program is government speech, meaning the government may regulate its contents.

The cancellation of the Redskins’ six trademarks neither prohibits the Redskins from continuing to use their marks and call themselves the Redskins, nor does it necessarily allow others to use their mark. A number of different state and federal trademark remedies are still available to the Redskins but there is still a chance that withdrawing the trademark protection may dilute the commercial value of the marks. The Redskins themselves even fear the cancellation may cause a variety of other problems to occur, such as: customs may not stop the importation of goods that bear infringing marks; mark owners may lose constructive nationwide notice of ownership; and the owners may not be able to pursue certain counterfeiting claims and remedies^[6]. In short, the Redskins options to stop infringers have become more limited. Any business should be fearful that a loss of trademark registration could cost it significant profits and business.

The law concerning registration is still in a state of flux. While the Supreme Court has decided to not hear arguments in the Redskins’ appeal, it will review a similar case, Lee v. Tam,^[7] which challenges the disparaging provision of the Lanham Act as unconstitutional after an Asian-American rock band named The Slants as denied trademark registration. The case has not yet been scheduled for oral argument. Stay tuned!

William J. Cass, Esq. and Adam I. Bercowetz, Esq.

William J. Cass is the Co-Chair of the Additive Manufacturing Practice Group of Cantor Colburn LLP located at 20 Church Street, 22nd Floor, Hartford, CT 06103-3207.

[1] Opening Brief of Plaintiff-Appellant, Pro-Football, Inc. v. Blackhorse, et al., No. 15-1874, p. 1 [Dkt. No. 29]. .

[2] 15 U.S.C.. § 1125.

[3] https://www.uspto.gov/page/about-trademark-infringement

[4] Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439, 448 (E.D. Va. 2015).

[5] Id. at 450.

[6] . Opening Brief of Plaintiff-Appellant, Pro-Football, Inc. v. Blackhorse, et al., No. 15-1874, p. 18 [Dkt. No. 29.]

[7] Petition for a Writ of Certiorari , Lee v. Tam, (U.S. Apr. 20, 2016) (No.15-1293) ), p. 2 (petitioning for certiorari from the Federal Circuit decision holding that the Patent Office unconstitutionally denied trademark registration of the Asian-American rock band name The Slants). See Decision, Lee v. Tam, 785 F.3d (Fed. Cir. 2015), cert. granted, (U.S. Sept. 29, 2016) (No. 15-1293).