Tuesday, September 16th, 2014
The Redskins recently suffered a major loss that won’t cause the team to fold but still hurts its prospects.
Quarterback Robert Griffin III’s dislocated left ankle? Well, that too, but I’m talking about the U.S. Patent and Trademark Office revoking several of the team’s registrations for its REDSKINS trademark, holding that the trademark is disparaging to American Indians.
On that trademark front, the Redskins filed a lawsuit in federal court attacking the decision. What the Redskins filed illustrates its litigation plans and provides a useful reminder on why federal trademark registration is valuable.
Off to A Virginia Federal Trial Court
The Redskins had two options for contesting the USPTO decision. It could have filed an appeal with the Federal Circuit Court of Appeals, which sits in Washington D.C. It chose not to do so.
Instead, the Redskins filed a lawsuit in a federal trial court in Alexandria, Virginia. By going to a trial court rather than the appellate court, both the Redskins and the American Indian plaintiffs can introduce new evidence.
Also, the Redskins probably chose the trial-court route to avoid the Federal Circuit Court of Appeals. Any appeal from the federal trial court in Alexandria will go to the Fourth Circuit Court of Appeals, which is headquartered in Richmond.
Shortly before the USPTO’s recent REDSKINS decision, the Federal Circuit Court of Appeals issued a decision concerning another purportedly disparaging trademark, which decision contains legal holdings unfriendly to the Redskins’ legal position.
Effect of Losing Trademark Registration
The Redskins don’t have to change its team name if its trademark registrations are revoked. You get rights to a trademark simply by using it. Federal registration just strengthens your rights.
In its federal lawsuit, the Redskins highlighted several detriments it will suffer if its trademark registrations are revoked. This illustrates why getting a federal trademark registration is beneficial:
• The team probably won’t be able to use the U.S. Customs Service to stop importation of counterfeit merchandise.
• The team probably won’t be able to use the U.S. Marshals Service to interdict counterfeit merchandise.
• It’s easier to stop cybersquatters if you have a trademark registration. A cybersquatter is someone who wrongfully registers or uses a domain name that contains someone else’s trademark (e.g., RedskinsJerseyOutlet.com).
• It’s easier to attack trademark infringements on social media, such as Facebook and Twitter, if you have a trademark registration.
• You can put ® next to your trademark only if it’s federally registered. Using the ® makes it easier to recover money damages from infringers.
• Having a federal registration makes it easier to prove your trademark is famous ¬− a well known brand like HONDA or APPLE. Famous trademarks have broader trademark protection.
• Having a federal registration makes it easier to prove an ordinary trademark infringement case.
• You need a nationally registered trademark to get certain trademark protections in the new top-level domain names that are opening up − alternatives to .com such as .team.
• Losing a U.S. trademark registration could undermine foreign trademark registrations gained based upon that U.S. registration.
• A federal trademark registration reserves your right to use your trademark throughout the U.S. as you grow into new geographic markets.
• Federal trademark registrations are valuable assets when it’s time to sell the business.
• Once your federal trademark registration is at least five years old, you get certain protections against potential challenges to your use of it.
First Amendment Challenge
The Redskins devoted a large segment of its federal lawsuit to raising First Amendment challenges to the revocation decision. It attacked the constitutionality of the part of federal trademark law that states trademarks that purportedly disparage a group cannot be federally registered.
There are federal appellate courts decisions holding there is no First Amendment problem here because not having a federal trademark registration does not prohibit speech − you can continue to use a trademark even if your registration is cancelled. The Supreme Court has not addressed this issue.
Yet, as illustrated above, a company suffers major detriments when its federal trademark registration is revoked. You can federally register a trademark that praises a group but not one that purportedly disparages a group. This might be unconstitutional viewpoint discrimination by the federal government. Generally speaking, the government can’t favor some points of view over contrary views when regulating speech.
Expect the Redskins to try to run with its First Amendment argument all the way to the Supreme Court if it doesn’t win on other grounds beforehand.
Written on September 16, 2014
by John B. Farmer
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