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Friday, August 11, 2006
Redskins Trademark Challenged as Offensive (Again)

In the latest salvo in a long-running war with the Washington Redskins, a group of Native American activists has filed a complaint with the Patent Trademark Office (PTO) seeking cancellation of the registered mark on the grounds that it is offensive. The petitioners argue that the term "Redskin" "was and is a pejorative, derogatory, denigrating, offensive, scandalous, contemptuous, disreputable, disparaging, and racist designation for a Native American person." A similar complaint was ultimately rejected by a federal court in Pro Football, Inc. v. Harjo, 284 F.Supp.2d 96 (D.D.C. 2003).

However, this time around, as WSJ Law Blogger Peter Lattman explains, the plaintiffs have an interesting strategy. The court in the previous case found that
laches (essentially, a statute of limitations) barred the Native Americans’ claim because the Redskins had registered their trademark way back in 1967. The Native Americans then appealed to the D.C. Circuit, which issued an opinion last year declining to rule on disparagement but asking the trial court to reconsider the laches issue.

So how do the new petitioners get around the laches issue? They’re young, ranging in age from 18 to 24, so their claim isn’t stale.


Sounds like yet another in a long tale of lame attempts to basically gain a little noteriety for themselves when these native Americans feel used and abused. However, quite frankly, they should feel honored and proud that modern day sports teams have selected them.

Anonymous Dave Burkey -- 8/11/2006 5:45 PM  

I'm not sure how US Trademark law works, but would the cancellation of the trademark necessarily prevent that football team from using the mark in any event unregistered? I think that would happen under Australian law (where I'm from), but it just would not protect the team from others using it.

Blogger Marco -- 8/11/2006 10:52 PM  

Marco, I think you're right that the team could continue to use the mark even if they lost their registered trademark status -- the problem would be that unlicensed jerseys, hats, etc., could be sold, and the team would lose out on those types of profits. As a result, if the mark were taken away, the team would likely choose another name

Blogger Geoffrey Rapp -- 8/11/2006 11:56 PM  

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Anonymous Anonymous -- 8/13/2006 9:02 AM  

"Here we go again"...get over it already. This has been beaten down to the point it is no longer a legal issue. It is certainly an ethical issue, but not a legal one at this point in time. Stare Decisis, res judicata, anyway, "are you ready for some football?"

Anonymous Anonymous -- 8/13/2006 12:10 PM  

the problem would be that unlicensed jerseys, hats, etc., could be sold, and the team would lose out on those types of profits. As a result, if the mark were taken away, the team would likely choose another name

Is this correct? Aren't they taking away the federal registration, as opposed to the mark itself, which is a property of the Washington Redskins?

Federal registration of a trademark has benefits over an unregistered mark: use of the federal courts for enforcement, constructive notice of the mark and exclusive use nationwide.

However, if you lose federal registration, you just lose those benefits, not the right to use the mark itself. Let's think about how losing those benefits would harm the Redskins:

1. Federal courts are a nice benefit. Not much more to say here.

2. Constructive notice for the Redskins logo isn't that important, since a competitor selling jerseys would have a hard time claiming they didn't have actual notice that the Redskins mark belongs to the Washington Redskins. It is a well-established mark, and anyone selling hats and jerseys with the Redskins logo surely knows the mark belongs to someone else and has been used in commerce for years.

3. Exclusive nationwide use of a trademark is a nice feature of federal registration. However, unregistered marks are still protected, it's just that the protection is limited to the geographic region in which the owner is the senior user of the mark. In this situation the geographic region for a prominent NFL team like the Skins is arguably nationwide anyway.

So the answer to Marco's question is "No, the football team would not be prevented from using the unregistered mark." In addition, the team would still be protected against others using it...the protections would just be less robust than if they were federally registered.

Blogger ChapelHeel -- 8/15/2006 2:39 PM  

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