So the Washington Redskins have had all their trademark registrations taken away. This is because THE WASHINGTON REDSKINS mark is racist and disparaging. And the trademark law does not allow disparaging marks to be registered.
Let me say that again. The REDSKINS mark is racist. The REDSKINS mark is disparaging. The team should change its name. Reasonable minds should not differ on this question. It isn’t even the interesting question. What’s interesting is why trademark law says that disparaging, obscene, or “scandalous” marks can’t be registered, and what happens next. Because if it’s just pure political correctness or Victorian squeamishness, then depending on what the courts do with these marks in the future, it may be that canceling the registrations just made the problem a whole lot worse.
There are benefits to registration. (In other words, there are good reasons we tell our clients to register). These include a presumption that the mark is valid nationwide so you don’t have to prove use of the mark in every state and every county, the right to sue in federal court, the right to treble damages and attorneys’ fees, and the right to have US Customs and Border Protection block infringing or counterfeit imports.
These are all good things, and I do not disagree that these benefits should not be available to protect a racist and disparaging mark. But more than anything, trademarks protect consumers from facing confusing similar marks on related goods. Registration gives the owner of the mark certain advantages, but still largely in the service of protecting the public.
This also means that a mark that has been dropped from the federal register doesn’t necessarily lose its marketplace protection. (Trademark rights originate from use, not registration). There are lots of reasons a registration can be canceled – failure to renew the registration is one of the most common, which has very little effect on the registrant’s ability to continue to protect the mark, as long as it is still in use. But in this case, the REDSKINS registrations were canceled because they were disparaging to Native Americans. And according to the Trademark Trial and Appeal Board, there is a “public interest in removing from the register marks that are disparaging.” How does that public interest get served if PFI gets to keep claiming exclusive rights in a disparaging mark? Despite some quick proclamations around the web that these cancellations are no big deal because of course Pro-Football gets to keep all its common law rights, we’ve never actually seen a case where rights in a disparaging mark were at issue post-cancellation.
A court could say yes, PFI, you’ve still got your common law rights, in which case the cancellations were really not that big of a deal (The somewhat major exception being that PFI can no longer have Customs and Border Protection help keep counterfeit merchandise from being imported. I’m not sure that this loss can be overestimated, but we’ll see). And if the cancelations were not that big of a deal and PFI still has most if its rights, are we really effectively advancing some idea of wholesomeness and politeness by having the marks canceled?
The other option is for the court to say no, PFI, you have no common law rights any more because the mark is racist and disparaging and we won’t protect it. But this won’t mean that PFI can’t use the mark anymore. (We have this First Amendment that pretty clearly means the court can’t tell PFI to change its name). What it will mean, though, is that everybody else can use it too. The marketplace will be blown wide open for anybody to make REDSKINS merchandise, with or without a license, and this racist and disparaging mark suddenly becomes ubiquitous and shows up on all kinds of shoddy or classless knickknacks. In which case whatever public policy we thought we were advancing by canceling the registration has been turned upside down.
The team should drop the REDSKINS name. If they don’t (and Snyder has sworn IN ALL CAPS that they won’t), then the cancellations either did (almost) nothing, or did nothing more than unleash this horrible relic of a less respectful time onto an unscrupulous marketplace who will just multiply the pain of the Native American petitioners who sought these cancelations in the first place. I’m not sure what “overriding public policy” either of those options serves.
I certainly agree that NOW, in the present day, the term “Redskins” is offensive now to a segment of the population (whatever the size).
From a legal standpoint (not a social one) I have a serious problem with the decision. Had the Washington team been seeking registration now (or even in the 1990’s when the first challenge was made) I would not have cared one iota if it was challenged and/or the PTO refused to register it sua sponte.
However, as I read the statutes, it seems pretty clear that the intended time point for making that evaluation is when the application for registration was made, which was back around the 1930s (not sure of the exact date offhand), not some time well after that point. At the time of registration, a provision for not registering a disparaging or offensive mark was in effect and the PTO granted the registration in spite of it. Moreover, the mark has long since passed the point of contestability. Thus, from a purely legal standpoint, I have a problem with the government conferring trademark rights and then taking them away after more than a century of reliance upon that registration by the team. To me, this smacks of an unjust “taking” without due compensation (and possibly even a violation of due process).
Notwithstanding the present-day feelings about the term, I hope that the team fights the ruling and that it is overturned on appeal and either a Supreme Court writ thereafter is denied or the over-ruling is affirmed by the Supreme Court on appeal purely on the basis that either:
(1) the challenge under that specific provision is untimely (as to anyone) because it had to have been brought by someone at about the time registration was sought, or
(2) that the mark cannot be cancelled now because that would be an unjust taking/due process violation because the government cannot confer the benefits of a trademark on a registrant despite a provision against disparaging terms and then, many, many years later remove that benefit on the basis that the mark is now (and in hindsight) considered disparaging or offensive.
This is particularly the case since the PTO has registered, and continues to register, numerous marks that are widely considered patently offensive to, for example, women (“whore”, “bitch”), people of different races or orientations, like “Cracka”, “Nigga”, “Dyke”, “Fag” as well as marks that have come to be considered disparaging like “Midget”, and marks containing offensive sex act-related expletives (examples of which I will not include).
To my view, if a mark has been registered and in use for a substantial period of time and then comes to be seen as offensive over time, it should not be cancelled no matter how offensive it becomes or how widespread that feeling is. If it is truly so bad, the user will suffer in the marketplace and change out of necessity or experience the consequences of not doing so.