Sunday, July 20, 2014

The “Redskins” Trade Mark Cancellation

In June 2014, the US Trademark Trial and Appeal Board (TTAB) cancelled the registrations for the American Football club Washington Redskins’ “REDSKIN” trade mark, based on section 2 (a) of the Trademark Act (15 U.S.C. Section 1052(a)). The Washington Redskins’ name has been the subject of recent controversy due to the team’s name originating from an offensive term used for Native Americans. There had been a swell of voices pushing for the team to change their name.

The controversy dates back to 1992, when various groups first voiced their outrage about the name, prompting a call for the cancellation of the “Redskins” and “Redskinettes” (the football club’s name for their cheerleading team) marks.

The proceedings themselves were convoluted. The TTAB first issued a trade mark cancellation order in 1999, which was then overturned by the US District Court for the District of Columbia, a decision that was in turn upheld by the US Court of Appeals based on an ancillary laches argument. What followed was a refilling of the cancellation proceedings, which lead to the June 2014 cancellation order from the TTAB.

To know the practical implications of the football club’s loss of trade mark protection for the “Redskins” term, it is important to understand that the TTAB only has the authority to cancel a trade mark if there is valid cause at the time of registration. They cannot prevent the Washington Redskins from using both the Redskins and Redskinettes brands.

Additionally, the cancellation of the registration for the trade marks seems to be a minor setback for the football club. The club no longer has the advantage of federal registration for the marks, but in the U.S. marks that are consistently used and regularly enforced – like the Washington Redskins – are protectable as unregistered trade marks.

What does this mean for the average business? Be careful of cultural sensitivities when choosing a brand. Words and logos that have derogatory or culturally unpopular meanings can cause havoc with a brand launch or brand extension into a new jurisdiction.

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