NFL Redskins lose trademark protection

Jim
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NFL Redskins lose trademark protection

Post #1 by Jim » Wed Jul 08, 2015 2:35 pm



Judge orders cancellation of Redskins trademark registration

"In rejecting the team's free-speech argument, Lee cited a U.S. Supreme Court ruling last month allowing the state of Texas to bar depiction of the Confederate battle flag on specialty license plates sought by the Sons of Confederate Veterans.

Specifically, Lee said federal law allows the government to exercise editorial control over the content of the trademark registration program, and he equated trademark registration to government speech as opposed to private speech.

Lee said the legal standard for canceling the registration is whether the name ''may disparage'' a substantial composite of the Native American community. Though the team has maintained that the name honors Native Americans, Lee said there is ample evidence that the name may be perceived as disparaging. He cited the fact that Native American leaders have been objecting to the name for decades, along with dictionary citations that the word is typically considered offensive."

Obviously this still has another appeal to go through, but how will this affect NFL products that carry the Redskins logo?





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NFL Redskins lose trademark protection

Post #2 by Sterngard Friegen » Wed Jul 08, 2015 3:07 pm



While the result is good, I think the path to it is not. My tentative thoughts are that stretching the Texas case to cover trademarks, which are governed by statute, does not appear to be intellectually honest.  Calling trademarks "government speech" also appears to be a stretch too far.

But I'll reserve final judgment till I read the opinion.





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NFL Redskins lose trademark protection

Post #3 by Jim » Wed Jul 08, 2015 3:30 pm




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NFL Redskins lose trademark protection

Post #4 by Mikedunford » Wed Jul 08, 2015 3:48 pm



While the result is good, I think the path to it is not. My tentative thoughts are that stretching the Texas case to cover trademarks, which are governed by statute, does not appear to be intellectually honest.  Calling trademarks "government speech" also appears to be a stretch too far.

But I'll reserve final judgment till I read the opinion.

I'll also reserve final judgment, but my initial view is that Sons of Confederate Veterans is squarely on point in the context of the Lanham Act.  




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NFL Redskins lose trademark protection

Post #5 by Sterngard Friegen » Wed Jul 08, 2015 4:05 pm



While the result is good, I think the path to it is not. My tentative thoughts are that stretching the Texas case to cover trademarks, which are governed by statute, does not appear to be intellectually honest.  Calling trademarks "government speech" also appears to be a stretch too far.

But I'll reserve final judgment till I read the opinion.

I'll also reserve final judgment, but my initial view is that Sons of Confederate Veterans is squarely on point in the context of the Lanham Act.  

Well, this is what makes horse races. I've glanced at the opinion and what does distinguish this case from the Texas license plate case is that in Texas state action occurred as to the request in question which disapproved the license plates that the Sons of the Confederacy wanted. In the Redskins case the USPTO decided that section 2(a) (or is that § 2(a)?) of the Lanham Act prohibited disparaging marks. But whether Congress intended that to include a long-held famous mark is an open question.

I predict a reversal by the circuit court which, in this case I believe is the Federal Circuit Court of Appeals.





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NFL Redskins lose trademark protection

Post #6 by Chilidog » Wed Jul 08, 2015 4:28 pm



Interesting. Does this apply to just the word "Redskins" or does it apply to the entire logo, including the profile image?

 





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NFL Redskins lose trademark protection

Post #7 by Mikedunford » Wed Jul 08, 2015 5:35 pm



While the result is good, I think the path to it is not. My tentative thoughts are that stretching the Texas case to cover trademarks, which are governed by statute, does not appear to be intellectually honest.  Calling trademarks "government speech" also appears to be a stretch too far.

But I'll reserve final judgment till I read the opinion.

I'll also reserve final judgment, but my initial view is that Sons of Confederate Veterans is squarely on point in the context of the Lanham Act.  

Well, this is what makes horse races. I've glanced at the opinion and what does distinguish this case from the Texas license plate case is that in Texas state action occurred as to the request in question which disapproved the license plates that the Sons of the Confederacy wanted. In the Redskins case the USPTO decided that section 2(a) (or is that § 2(a)?) of the Lanham Act prohibited disparaging marks. But whether Congress intended that to include a long-held famous mark is an open question.

I predict a reversal by the circuit court which, in this case I believe is the Federal Circuit Court of Appeals.

This does make a horse race. 

 The Washington Team decided to go with a 1071(b) civil action instead of direct appeal to the Fed. Cir., so I think this goes to the 4th Circuit next. (Which probably makes reversal marginally more likely than it would have been at the Fed. Circuit.)

Ultimately, I don't think the government speech issue is likely to be decisive. The appeals court is only going to have to reach that point if they find that trademark registration is a free speech issue.  As the decision pointed out, the two appellate courts to previously address that issue (Fed Cir and 5th Cir) both found that trademark registration doesn't implicate the First Amendment, because there is no bar on continued use of the mark. If the 4th decides to adopt the same rule, there is no need to address the government speech question. (And if the 4th decides to split from Fed and 5th, I think cert will be granted on at least that issue, and that SCOTUS will reverse.) 

In terms of the long-held famous mark, it's a tougher question - there's little evidence that Congress intended to include long-held marks, but there's also no clear statutory bar to cancellation of an incontestable mark.  Last time this was litigated, the DC Circuit essentially used laches to protect the long-held mark, but that's going to be a lot harder this time. The advocacy groups used the prior DC Circuit opinion as a roadmap, and selected plaintiffs carefully.  All of their plaintiffs in the current action filed their petitions very shortly after reaching the age of majority, so it's going to be hard to use laches here without contradicting longstanding principles. 




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NFL Redskins lose trademark protection

Post #8 by Mikedunford » Wed Jul 08, 2015 5:54 pm



Interesting. Does this apply to just the word "Redskins" or does it apply to the entire logo, including the profile image?

Technically, this applies to both and neither. 

Here's the short version explainer:

Trademarks are interesting, because (in the USA, but not in many other countries) the theoretical basis for trademark law is not that they are a form of property, but that they are a form of consumer protection. A trademark is something that serves to identify the source, origin, or sponsorship of the marked goods.  It's an indicator to the consumer of what level of quality to expect.  Think McDonalds. When you see the Golden Arches, you know that you are looking at a place where you can spend $10 or less for a very large meal that contains more than the recommended yearly allowance of grease. 

Thus, "Redskins" is the trademark for the Washington football franchise.  They've used the mark for years, they are well-known by that mark, and when you see the mark you know that you are looking at an occasionally adequate football franchise that is not overly burdened with a sense of racial sensibility. This decision does not change that. 

In the USA, a trademark does not need to be registered to be protected. There are common law protections that are available, and the Redskins will still be able to sue people to protect the mark.  Registration of a mark provides some additional protections above and beyond common law remedies (for example, it's possible to get an ex parte order to seize goods that are counterfeits of registered marks), and establishes a number of evidentiary presumptions that make it easier to litigate cases. 

This case deals purely with registration of the Redskins marks, and specifically with six specifically identified marks. Three are word marks ("The Redskins," "Redskins," and "Redskinettes"); three are pictures. None of the pictures is particularly recent, because the trademark office has been denying new applications for "Redskins" marks since 1992, including (according to the opinion) 7 applications from the football team.  The decision applies only to those six marks, and only to their status as registered marks. It does not apply to any other mark used by the team, and does not bar their continued use of those marks. 




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NFL Redskins lose trademark protection

Post #9 by Sterngard Friegen » Wed Jul 08, 2015 6:20 pm



The most important rights derived from registration under the Lanham Act are nationwide protection and the availability of the Federal courts for infringement actions.





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NFL Redskins lose trademark protection

Post #10 by Chilidog » Wed Jul 08, 2015 6:30 pm



So what if they took the combined image and text trademarks and simply removed the word "Redskins?"

They would still have the protection on the overall image.  That's the part that the knockoff makers copy anyway  

 





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NFL Redskins lose trademark protection

Post #11 by Mikedunford » Wed Jul 08, 2015 7:32 pm



So what if they took the combined image and text trademarks and simply removed the word "Redskins?"

They would still have the protection on the overall image.  That's the part that the knockoff makers copy anyway  

No, they held that both the word and image marks should be cancelled. 

But the loss of registration does not eliminate protection.  The marks lose the benefits of registration, but they retain common law trademark protection. The loss of registration will make it somewhat more difficult for them to go after knockoff makers, but by no means impossible. 




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NFL Redskins lose trademark protection

Post #12 by RTH10260 » Wed Jul 08, 2015 10:15 pm



the IANAL question of the day re:

but they retain common law trademark protection.

 How does one establish a new common law protected mark? Just by applying the (R) symbol to something?





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NFL Redskins lose trademark protection

Post #13 by Sterngard Friegen » Wed Jul 08, 2015 10:21 pm



Usage such that it identifies the product or service with one source.





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NFL Redskins lose trademark protection

Post #14 by rpenner » Thu Jul 09, 2015 11:45 am



So if I started a line of audio discs with a stylized "Penner's Perfect Pontifications" logo, I would well on my way to common law trademark rights?





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NFL Redskins lose trademark protection

Post #15 by Mikedunford » Thu Jul 09, 2015 4:16 pm



You would at least be on your way, yes. How far on your way would depend on the precise circumstances. 




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NFL Redskins lose trademark protection

Post #16 by Sterngard Friegen » Thu Jul 09, 2015 4:56 pm



Starting them is one thing. To begin to accumulate the secondary meaning required for protection you would need to start marketing them.





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Re: NFL Redskins lose trademark protection

Post #17 by bob » Thu Sep 29, 2016 7:21 pm

WaPo: Supreme Court to review case important to Redskins trademark fight:
The Supreme Court will decide whether a federal law that bars the registration of disparaging trademarks violates free speech, a case with direct implications for the Washington Redskins in their fight to defend their famous team name.

The justices on Thursday announced that they will consider whether part of the 1946 Lanham Trademark Act that prohibits registration of a trademark that “may disparage” persons violates the First Amendment, as an appeals court has ruled.

The court did not take the Redskins case, but instead chose another that is further along in the legal process. The lawsuit was filed by Portland, Ore.-based performer Simon Shiao Tam, whose Asian American rock band is known as the Slants and who was turned down by the U.S. Office of Patent and Trademark Office when he tried to register the band’s trademark in 2011.

The patent office said the name was likely to disparage a significant number of Asian Americans. But Tam said the point of the band’s name is just the opposite: an attempt to reclaim a slur and use it “as a badge of pride.”

Tam lost in the first rounds. But then a majority of the U.S. Court of Appeals for the Federal Circuit said the law, which calls for the rejection of trademarks that “may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” violates the First Amendment’s free speech guarantee.

* * *

The Redskins battle is in a different legal posture. The team’s trademark was canceled in 2014 after decades of use. The team asked a district judge in Virginia to overturn the cancellation and was refused. The case is now awaiting hearing in the U.S. Court of Appeals for the 4th Circuit in Richmond.

* * *

The team has listed a long list of crude and offensive names that have received trademark protection. The Slants’ lawyers noted conflicting decisions that they said made no sense.

The PTO denied registration to Have You Heard Satan is a Republican “because it disparaged the Republican Party,” the band’s lawyers wrote, but it did not find the Devil Is a Democrat “disparaging.”


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Re: NFL Redskins lose trademark protection

Post #18 by Mikedunford » Wed Jan 18, 2017 6:36 pm

Oral argument in the disparagement case was today; a link to the transcript is below for completeness.

I've got mixed feelings on this one, to be honest. "Disparagement" is such a vague and subjective concept that I'm not incredibly comfortable with having that as a criteria for whether or not a mark qualifies for the extra protection afforded by copyright registration. On the flip side, I'm also not thrilled with government grants of commercial benefits to goods that disparage segments of the population.

https://www.supremecourt.gov/oral_argum ... 3_l6gn.pdf


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Re: NFL Redskins lose trademark protection

Post #19 by RoadScholar » Wed Jan 18, 2017 9:48 pm

It's the format, to me: a COLOR, of, explicitly, SKIN. Two strikes. "Indians" is based an almost comic geographical mistake; "Braves" and "Chiefs" are a cheapening of their culture, but nominally complimentary... yet all three have been used sarcastically as insults and are still team names.

It's a murky phenomenon... "krauts" for Germans, "beaners" for Mexicans, "garlic-eaters" and so on are gastronomic epithets, and thus sort of mild. "Bog-trotters" and "hillbillies" are geographic, and as such at least partly accurate. Some Anglos have called Asians "slant-eyes" while some of them gave us the epithet "round-eyes." And the ever-popular "greaseballs" has seen broad application.

Secondary characteristics. Rude but not infuriating.

The point is, even racial insults have a gradient of offensiveness. Some folks argue, and I largely agree, that "Redskins" crosses some sort of line.

The only format that seems a step beyond that level is epithets based on comparisons to animals, like "sand monkeys" or "yard apes." And you sure as hell won't find sports teams using those names anytime soon... at least barring a popular frenzied outbreak of "deplorable chic."


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Re: NFL Redskins lose trademark protection

Post #20 by Sam the Centipede » Wed Jan 18, 2017 10:20 pm

RoadScholar wrote:It's the format, to me: a COLOR, of, explicitly, SKIN. Two strikes. "Indians" is based an almost comical geographical mistake; "Braves" and "Chiefs" are a cheapening of their culture, but nominally complimentary... yet all three have been used sarcastically as insults and are still team names.

It's a murky phenomenon... :snippity:

As you say, murky. To my ears, "redskins" doesn't - or rather didn't - feel any more insulting than "braves" or "indians". And the Washington team's usage is clearly intended to invoke the desirable macho warrior qualities of those Native Americans of history, which I can't see as an insult to anybody.

But the point is that it's not my opinion and impression that is important in our current times. We now generally accept that the opinions of the identified group must carry greatest weight. That might be "political correctness" but it's a decent guideline. So my opinion now is that if a substantial fraction of Native Americans feel the term is unacceptable, then it should be changed.



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Re: NFL Redskins lose trademark protection

Post #21 by Maybenaut » Wed Jan 18, 2017 10:24 pm

RoadScholar wrote:It's the format, to me: a COLOR, of, explicitly, SKIN. Two strikes. "Indians" is based an almost comic geographical mistake; "Braves" and "Chiefs" are a cheapening of their culture, but nominally complimentary... yet all three have been used sarcastically as insults and are still team names.

It's a murky phenomenon... "krauts" for Germans, "beaners" for Mexicans, "garlic-eaters" and so on are gastronomic epithets, and thus sort of mild. "Bog-trotters" and "hillbillies" are geographic, and as such at least partly accurate. Some Anglos have called Asians "slant-eyes" while some of them gave us the epithet "round-eyes."And the ever-popular "greaseballs" has seen broad application.

Secondary characteristics. Rude but not infuriating.

The point is, even racial insults have a gradient of offensiveness. Some folks argue, and I largely agree, that "Redskins" crosses some sort of line.

The only format that seems a step beyond that level is epithets based on comparisons to animals, like "sand monkeys" or "yard apes." And you sure as hell won't find sports teams using those names anytime soon... at least barring a popular frenzied outbreak of "deplorable chic."


This is actually what the Supreme Court case is about... whether an Asian-American rock band can trademark the name "Slants."



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Re: NFL Redskins lose trademark protection

Post #22 by RoadScholar » Wed Jan 18, 2017 10:30 pm

Maybe it's the echo of momentous speeches that said things like "not by the color of their skin but by the content of their character" and of signs that divided accomodations into "white" and "colored" that makes "Redskins" just seem significantly wronger.

And uniquer.


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Re: NFL Redskins lose trademark protection

Post #23 by TollandRCR » Thu Jan 19, 2017 9:20 am

Most colleges and universities that had names with a Native American connection for their sports teams dealt with this a decade or more ago. Owners of the Washington franchise fought, in my opinion to demonstrate that nobody is the boss of them.


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Re: NFL Redskins lose trademark protection

Post #24 by Mikedunford » Thu Jan 19, 2017 10:26 am

RoadScholar wrote:Maybe it's the echo of momentous speeches that said things like "not by the color of their skin but by the content of their character" and of signs that divided accomodations into "white" and "colored" that makes "Redskins" just seem significantly wronger.

And uniquer.


If trademark protection is based on drawing a line that divides things between "disparaging" (and therefore unprotectable) and "non-disparaging" (and therefore protectable), it's hard to find a place for the line that the Redskins aren't on the wrong side of. I'm just not entirely comfortable with that kind of line-drawing exercise when speech is involved and the government is doing the line-drawing.


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Re: NFL Redskins lose trademark protection

Post #25 by MRich » Thu Jan 19, 2017 10:50 am

RoadScholar wrote:The only format that seems a step beyond that level is epithets based on comparisons to animals, like "sand monkeys" or "yard apes." And you sure as hell won't find sports teams using those names anytime soon... at least barring a popular frenzied outbreak of "deplorable chic."

Thread hijack - I have never heard "yard apes" as a racial epitaph. A "rug rat" is a tot - crawling or toddling. A "yard ape" is an older kid who plays in the yard. Each is said with affection.




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