Monthly Archives: August 2014

Business Tips for Trademarks

There has been a lot of media coverage regarding the case before the Trademark Trial and Appeals Board (TTAB) that resulted in the cancellation of the federally issued trademarks owned by National Football League’s Washington Redskins containing the word “REDSKINS” on the ground that the term is disparaging to Native Americans. With the Redskins case in the news in the last few weeks, many businesses are looking at their own trademark portfolios with an understandable degree of concern as to whether they too may own trademark registrations that might also be potentially challenged and cancelled on similar grounds.

Judging from the discussions I have had in the wake of the news regarding the cancellation of the Redskins federal trademark registrations, I think many business owners are wondering how a famous trademark, like REDSKINS, that has been federally registered since September 1967 (almost 45 years) could be subject to cancellation. Above and beyond simple curiosity, there is justifiable concern regarding the protectability of trademark rights when those rights appear to be subject to termination by judicial fiat. It is not unreasonable, in my opinion, in the wake of the Redskins decision for businesses to wonder whether their investment of capital and effort in a protectable brand is as safe or prudent a use of their resources today as it was prior to the Redskins decision.   One might reasonably wonder, for example, if the owners of the Redskins football team had been asked, years ago, to invest millions of dollars to develop the REDSKINS brand and to properly protect the brand via federal trademark registration, with the caveat, that despite the investment of an enormous amount of time and money, the brand would be subject to challenge, and the corresponding trademark registration subject to cancellation, decades later, by persons, not yet born, who would not be competitors or even associated with football, my guess is that the answer would have been a resounding ‘NO’.

So, just how did the Washington Redskins and the NFL come to find themselves in this position? Well, let’s start with the selection of the trademark.

Trademarks are typically categorized as fanciful or coined, arbitrary, suggestive, and merely descriptive. There is one more category, generic. However, technically any term that falls into this category can never be a trademark for reasons discussed below.

To create a strong brand, it is best if the mark is ‘fanciful’ or ‘coined’. These are terms that are completely made-up, that is, the term has no meaning other than as a trademark. A classic example is XEROX for photocopiers.   These are some of the strongest marks assuming they are properly used and protected.

‘Arbitrary’ marks are those marks which comprise a word that is a common word, but the meaning of the word has no relation to the goods or services associated with the mark. APPLE for computers is one such example. These too, start as very strong marks.

A ‘suggestive’ mark is one that suggests some attribute or characteristic of the goods or services, but does not describe them.   An example of a suggestive mark is AIRBUS for airplanes.

Finally, a ‘descriptive’ mark is one that merely describes the goods or services. These types of marks can ultimately be registered on the Principal (or primary) Register, but only after proving they are capable of being a source identifier, that is, consumers believe the goods or services emanate from a common source. These marks are near the weaker end of the spectrum, but can be protected.

Terms that are generic, that is, they are the common term for the goods or services can never be registered. The selection of a generic term as a brand does not offer protection for the brand name and allows third parties to use the term freely.

The REDSKINS mark is considered an arbitrary mark, and therefore a choice that, from a trademark protection perspective, was a good choice for a strong mark. Why then, was it subject to challenge?

In addition to the considerations of the type of mark to select (fanciful, arbitrary, etc.), persons seeking federal registration of trademarks must also consider other important issues. For example, consideration must be given regarding whether the mark is a surname or a geographical location, whether the mark is misdescriptive of the goods or services with which it is to be associated, whether the mark is protected indicia, or whether the proposed trademark is immoral or scandalous, or may disparage, for example, persons (living or dead), beliefs, or symbols. This last consideration, i.e., whether the mark would be considered disparaging, is the one at the heart of the REDSKINS cancellation proceeding.

There is no published information to my knowledge regarding whether the issue of disparagement toward Native Americans was considered in the selection of the REDSKINS mark. The evidence in the case presumably showed that the sentiment that the trademark was disparaging existed at the time the trademark was selected. The NFL has maintained throughout the dispute that it has always acted honorably and respectfully towards Native Americans. While this may be true, with respect to the action brought by Native Americans before the TTAB, the NFL’s intent is irrelevant.

The TTAB ruling suggests that Native Americans may have been objecting to the use of this mark for quite some time. But the first cancellation proceeding brought by the petitioners in the REDSKINS case was not filed until 1992, fully twenty-five years after the mark’s initial federal registration. One might ask if a substantial composite of Native Americans found the term “redskins” to be disparaging at the time of the registrations of these successively filed marks, why the offended parties did not institute proceedings years ago? While there may be an answer to that question, it does not appear in the record of the case. Moreover, the issue of the lack of objection by Native Americans to the use of the name for decades did not apparently factor into the TTAB’s decision.   Many believe this is unfortunate or even unfair as the NFL heavily invested in the REDSKINS brand relying on what might well have been a reasonable belief that use of the brand in association with a highly successful and much beloved football team was not offensive to a substantial composite of Native Americans.

The cancellation of the REDSKINS federal trademark registration has sent shock waves throughout the legal and business communities.  The ruling will act as established precedent for future cancellation proceedings.   It is a ruling that has provoked questions about vulnerability of trademark rights to attack by individuals or groups that might be able to demonstrate that they are somehow offended by a mark.   But more importantly, perhaps, is the fact that the case has raised, and will continue to raise, questions of fundamental fairness. Specifically, the fairness of basing the cancellation of a famous trademark comprising an enormously successful brand for which the owner has made a huge monetary investment over literally decades on the ground that the trademark was disparaging at the time of its registration and offends a group that failed to timely pursue its rights.

The NFL has indicated that it will appeal the ruling. Accordingly, the fate of these registrations is yet to be seen.

trademark

If you need assistance with trademark registrations, searches, or trademark licensing, Anna Vradenburgh is a well-respected, business-mind expert in trademark issues with extensive experience prosecuting domestic and foreign trademarks. In addition to her prosecution practice, Anna also assists clients in the selection and use of trademarks and represents clients in trademark opposition matters, domain name dispute matters, and before the federal Trademark Trial and Appeals Board. Anna can also assist your company in licensing maters, including drafting and negotiation of trademark licensing agreements. For more information visit the Eclipse Law Group website, or contact Anna at (818) 488-8146.

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Washington Redskins Trademark Follow Up

All eyes have been on the Trademark Trial and Appeals Board (TTAB), following the recent order to cancel six trademark registrations owned by National Football League’s Washington Redskins, each containing the word REDSKINS. Although a divided TTAB granted the Native American’s petition to cancel federal registration of the team’s mark, the decision will not prevent the Washington Redskins from using the trademark in its name, uniforms, and the like.

The TTAB decision comes after twenty years of efforts by Native American petitioners who allege that the ‘REDSKINS’ marks disparage Native Americans. The TTAB first reviewed Native American petitions to cancel the trademarks in 1992, although that case, Pro Football, Inc. v. Harjo, 90 USPQ2d 1993 (D.C. Cir. 2009), was ultimately dismissed by the D.C. Circuit, not on the merits, but for procedural reasons.

In the recent matter, because all of the challenged registrations had been registered for more than five (5) years, the TTAB had a very narrow legal question to answer, namely, whether the evidence made of record, established “that the term ‘redskins’ was disparaging to a substantial composite of Native Americans at the time each of the challenged registrations issued.”  (emphasis added)  That is, during the time period from 1967-1990 (registrations issued in 1967, 1974, 1978, and 1990).  To answer this question, the TTAB applied a two-part test, which (1) looked at the meaning of REDSKINS as it appears in the trademarks, including how those marks were used in connection with the goods and services identified in the registration; and (2) whether that meaning may disparage Native Americans.

In considering the first part of the test, the TTAB found that the Washington Redskins and the NFL “made continuous efforts to associate its football services with Native American imagery.”  Because of the maintained association with Native Americans, the TTAB found that the marks retained their connotation and meaning with respect to Native Americans.

With regard to the second part of the test, the TTAB stated that the determination of disparagement must be made within the context of the goods or services, wherein the context could: (a) make an innocuous term offensive; (b) remove the disparaging meaning from an otherwise disparaging term; or (c) have a no effect on a term’s disparaging meaning.

Although the NFL argued that its use of the mark removed the disparaging meaning of the term and that it had honorable intent in its use of the marks, the TTAB ultimately agreed with the petitioners that the NFL’s use had no effect on the disparaging meaning of the term.  The finding that the term was disparaging during the relevant period was based, in part, on a determination that a substantial composite of Native Americans, approximately 30%, found the meaning of the term REDSKINS to be disparaging during the relevant time periods.  Although the NFL produced contradictory evidence from Native Americans, the evidence did not negate the negative opinion of the substantial composite.  In making its finding, the TTAB stated “[t]he ultimate decision is based on whether the evidence shows that a substantial composite of the Native American population found the term “Redskins” to be disparaging when the respective registrations issued.  Heeb Media LLC, 89 USPQ2d at 1077.  Therefore, once a substantial composite has been found, the mere existence of differing opinions cannot change the conclusion.”  In addressing the NFL’s contentions regarding its honorable intent in the use of the marks, the TTAB stated the “alleged honorable intent and manner of use of the term do not contribute to the determination of whether a substantial composite of the referenced group found REDSKINS to be a disparaging term in the context of respondent’s services during the time period 1967-1990, because the services have not removed the Native American meaning from the term and intent does not affect the second prong.” Because the term was determined to be disparaging during the relevant time period, the TTAB concluded that that the marks should be cancelled.

The Washington Redskins have announced plans to appeal the TTAB decision.  The trademark registrations remain in effect while the appeal is pending, and as stated above, this decision has no legal effect on the team’s ability to use the term REDSKINS or the marks.

Beyond potential financial losses to the NFL, the implications of this TTAB decision are unclear at this time.  However, there are many trademarks that could be affected by this ruling.

While other companies have successfully defended their marks before the TTAB against petitions to cancel from Native American groups, notably SQUAW VALLEY marks in connection with ski goods and services, 80 USPQ2d 1264, 1267 (TTAB 2006), the Redskins matter may represent a new reality for owners of Native American themed marks.

If you have questions about the implications of the TTAB Redskins ruling or your company owns a Native American themed trademark, you need an experienced trademark attorney.  Anna Vradenburgh is a well-respected, business-mind expert in trademark issues with extensive experience prosecuting domestic and foreign trademarks.  In addition to her prosecution practice, Anna also assists clients in the selection and use of trademarks and represents clients in trademark opposition matters, domain name dispute matters, and before the federal Trademark Trial and Appeals Board.  Anna can also assist your company in licensing maters, including drafting and negotiation of trademark licensing agreements.  For more information visit the Eclipse Law Group website, or contact Anna at (818) 488-8146.