NFL Redskins lose trademark protection

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Jim
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NFL Redskins lose trademark protection

Postby 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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Sterngard Friegen
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NFL Redskins lose trademark protection

Postby 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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Jim
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NFL Redskins lose trademark protection

Postby Jim » Wed Jul 08, 2015 3:30 pm


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Mikedunford
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NFL Redskins lose trademark protection

Postby 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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Sterngard Friegen
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NFL Redskins lose trademark protection

Postby 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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Chilidog
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NFL Redskins lose trademark protection

Postby 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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Mikedunford
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NFL Redskins lose trademark protection

Postby 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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Mikedunford
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NFL Redskins lose trademark protection

Postby 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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Sterngard Friegen
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NFL Redskins lose trademark protection

Postby 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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Chilidog
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NFL Redskins lose trademark protection

Postby 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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Mikedunford
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NFL Redskins lose trademark protection

Postby 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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RTH10260
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NFL Redskins lose trademark protection

Postby 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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Sterngard Friegen
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NFL Redskins lose trademark protection

Postby 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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rpenner
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NFL Redskins lose trademark protection

Postby 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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Mikedunford
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NFL Redskins lose trademark protection

Postby 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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Sterngard Friegen
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NFL Redskins lose trademark protection

Postby 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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