On June 18, 2014 the U.S. trademark office (specifically, the Trademark Trial and Appeal Board (TTAB)) found the term “Redskins” was disparaging of Native Americans, when used in relation to professional football services. Consequently, the trademark name would be cancelled unless an appeal was presented. On August 5, 2015, the Redskins filed an appeal to fight for its name. See the official publication about its finding below. Find a good article exploring reasons why the Washington Redskins continue to fight for its trademark registration, below.
Original United States Patent and Trademark Office Publication: (June 18, 2014)
- the legal presumptions of ownership and of a nationwide scope of rights in these trademarks;
- the ability to use the federal registration ® symbol, and;
- the ability to record the registrations with the U.S. Customs and Border Patrol Service so as to block the importation of infringing or counterfeit foreign goods.
- Losing the federal registration of a trademark does not necessarily mean that the owner loses all legal rights in the mark. This is because trademark rights in the United States come from use of a mark on or in conjunction with goods or services, not merely from the additional, optional step of federal registration.
- The TTAB determines only whether a mark can be registered with the federal government (and thus gain the additional legal benefits thereof), not whether it can be used.
- The mark owner may still have rights in the mark based on use, known as “common law” rights-and those use-based rights may continue to exist even if a federal registration is cancelled.
- The TTAB is an independent administrative tribunal within the USPTO. It is authorized to determine a party’s right to register a trademark with the federal government or, if the party already owns a registration, its right to maintain it. The Board is not authorized to determine whether a party has the right to use a trademark, just whether it has the right to register it. (And thus obtain the additional legal benefits thereof, as outlined, above.)
- A cancellation is a TTAB proceeding in which a party seeks to cancel an existing registration of a mark.
- Under the law, a person (including any legal entity) who believes he will be damaged by the continuing registration of a mark may file a petition with the TTAB to cancel the registration, asserting one or more grounds for cancellation.
- Most USPTO cancellation proceedings assert grounds for cancellation under Section 2 of the Trademark Act, 15 U.S.C. § 1052, which specifiesa variety of types of terms or marks that Congress has determined to be ineligible for federal registration, including those that are determined, as in this case, to disparage an individual or group.
- Yes. According to federal trademark law, a long-standing registration can be the subject of a cancellation proceeding at any time, if an appropriate ground for cancellation is asserted.
- A claim that a registered trademark was disparaging of an individual or group at the time it was originally registered is one such example of a claim that can be appropriately brought at any time, regardless of the age of the registration.
- A party dissatisfied with the Board’s decision has two options to seek further judicial review of it.
- The party can file an appeal to the U.S. Court of Appeals for the Federal Circuit in Washington, D.C.; or
- The party can file a civil action in district court.
- Any civil action would be filed in the U.S. District Court for the Eastern District of Virginia, which has jurisdiction over civil actions seeking review of TTAB cancellation proceedings. (Before 2011, the district court in the District of Columbia had jurisdiction over such actions, but Congress changed that provision of the Trademark statute when making various amendments to the Patent statute.)
Article About Appeals (September 9, 2015):