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Loss Of Redskins Trademark Registration Is Overblown

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The Trademark Trial and Appeal Board (TTAB) has decided to cancel six federal trademark registrations that include the term "Redskins."  The ruling was made in relation to the longstanding use of the mark by the National Football League's Washington Redskins.  It was deemed that the use of "Redskins" by the NFL is disparaging of Native Americans, and thus the federally registered mark was effectively cancelled as of today.  The implications of this ruling have been greatly exaggerated.

Today's ruling will have "no effect at all on the team’s ownership of and right to use the Redskins name and logo."  That was the only emphasized and underlined portion of a statement by Bob Raskopf, trademark attorney for the Washington Redskins, which was released after the TTAB decision was announced.  The Washington D.C.-based NFL team intends to appeal the TTAB's decision cancelling the federal trademark registrations.  More importantly, the team has recognized that it continues to own and is able to protect its marks without the registrations in place.  The organization is correct.

ESPN.com Sports Business reporter Darren Rovell wrote, "[w]ithout protection, any fan can produce and sell Washington Redskins gear without having to pay the league or the team for royalties and wouldn't be in violation of any law for doing so."  That is simply not true.  The decision by the TTAB does not require the Washington D.C.-based NFL team to change its name, stop using the "Redskins" marks and it does not mean that the organization loses all legal rights in the marks.  There are benefits to having a federal registration attached to an owned trademark, including but not limited to a legal presumption of ownership of the mark and the ability to bring an infringement action in federal court seeking statutory damages.  Importantly, a lack of a federal registration in place does not equate to anarchy where any individual can create merchandise bearing "Redskins" marks and sell same in commerce.

If a sports fan decides to produce and sell Washington Redskins gear without obtaining advance permission from the team, and the gear creates a false representation that it originated from the NFL's Washington Redskins organization, then that fan may be in violation of improperly benefiting from the use of the team's common law protected trademark and be forced to pay damages related to the infringing use.

The U.S. Patent and Trademark Office makes the distinction between a federal registration in a trademark and common law rights quite clear.  It says on its FAQ page, "Federal registration is not required to establish rights in a trademark.  Common law rights arise from actual use of a mark..."  The Washington Redskins organization has made it known that use of the Redskins name and logo will continue.  There is little doubt in the public sphere as to a clear association between such marks and the NFL organization.  Thus, whether the team prevails in appealing the cancellation of the federal registrations of the marks or not, it may still use such marks in commerce and prevent others from trying to benefit off of the use of same without consent.

Darren Heitner is an intellectual property lawyer and Founder of HEITNER LEGAL, P.L.L.C.