Judge Tells USPTO to Void Redskins Trademarks
WASHINGTON — A U.S. District Court judge has ordered the U.S. Patent & Trademark Office to cancel six federal registrations for trademarks related to the Washington Redskins.
U.S. Judge Gerald Bruce Lee also upheld the U.S. Patent & Trademark Office's decision in June 2014 that the National Football League team’s nickname might be disparaging to Native Americans. But that doesn’t mean the name would be stricken from the team, the airwaves or from merchandise.
Granting motions for summary judgment in the U.S. District Court for the Eastern District of Virginia, Lee made it clear, as the USPTO had before him, that team owner Daniel Snyder is not precluded from using the name and trademarks.
But, said the court, "the Redskins Marks consisted of matter that 'may disparage' a substantial composite of Native Americans during the relevant time period, 1967-1990, and must be cancelled" and that those marks "consisted of matter that bring Native Americans into 'contempt or disrepute.'
The decision does not mean that the football team has to change its name or stop using the trademarks at issue. But it does mean that it loses the legal presumption of ownership, the ability to use the registration symbol and the ability to get the U.S. Customs and Border Patrol service to block importation of counterfeit goods into the country.
Cancelling the registration does not mean it can't be used, only that it loses government protection. The trademark owner may also still retain "use" rights under common law.
"I am surprised by the judge's decision to prevent us from presenting our evidence in an open trial," team president Bruce Allen said. "We look forward to winning on appeal after a fair and impartial review of the case.
“We are convinced that we will win because the facts and the law are on the side of our franchise that has proudly used the name Redskins for more than 80 years," he added.
"This means that, although the team may continue to use the name and associated trademarks, it will be much harder for it to stop others from also using it, and thereby cutting into the team's revenue,” said public interest law professor John Banzhaf, who has pushed for the name change, including challenging the broadcast licenses of stations that use the name of the Washington football team on air, a challenge the FCC rejected.
On Wednesday (July 8), Banzhaf said that he still thinks the FCC has the authority to force broadcasters to stop using the name on-air.
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Contributing editor John Eggerton has been an editor and/or writer on media regulation, legislation and policy for over four decades, including covering the FCC, FTC, Congress, the major media trade associations, and the federal courts. In addition to Multichannel News and Broadcasting + Cable, his work has appeared in Radio World, TV Technology, TV Fax, This Week in Consumer Electronics, Variety and the Encyclopedia Britannica.