By: Sharon Urias, Esq.
In 2014, the USPTO stripped the Washington Redskins of trademark protection for six of its registered trademarks as offensive and disparaging of Native Americans. Since that time, the NFL franchise has been fighting to get the USPTO’s decision reversed on appeal. Presently, the case is pending before the United States Court of Appeals for the Fourth Circuit. And, in an unusual set of circumstances, the NFL franchise recently filed a petition with the United States Supreme Court to hear its case even though the Fourth Circuit Court has not yet ruled on the case.
The Washington Redskins—which have one of the most lucrative and established brands in the NFL—assert that the name and logo is not a slur; rather, it is a sign of honor, courage and bravery.
Anyone familiar with this case knows there are highly-charged political and social issues involved. Its outcome will have far-reaching consequences for trademark law and how it will impact owners of “controversial” marks, now and in the future.
The USPTO’s Authority to Cancel Trademark Registrations
Section 2(a) of the Lanham Act authorizes the USPTO to refuse trademark registration if the mark “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage of falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…”
This passage from Section 2(a) gives the USPTO somewhat broad authority to ensure that names and logos it deems offensive and disparaging will not be granted trademark protection. In an age with a growing emphasis on political correctness, it is important to understand the ramifications of establishing a mark in good faith that may have any possible negative connotation.
Is There A Free Speech Issue?
Historically, the Supreme Court has been protective of offensive speech; however, the U.S. Government has argued that the trademark law allowing the USPTO to cancel trademark registrations does not violate the First Amendment and that owners of trademarks are free to use their names and marks. Therefore, the NFL Franchise may continue to use its Washington Redskins’ name and mark, but it loses USPTO protection, which conceivably could detrimentally impact the business of the team.
It is important to note that even if Washington fails in its legal efforts to regain its trademark registrations, it still can enforce its trademarks using common-law rights, which are based on use, not registration (the Washington Redskins have been using the name and logo since the 1930’s).
In response to the Government’s argument that free speech is not inhibited by the USPTO denying trademark protections for “offensive” speech, Washington’s attorneys assert that the government is not free to attach constitutional conditions, such as surrendering First Amendment rights, so that one can receive a government benefit—in this case, trademark protection from the USPTO.
What Does This Mean For You?
There could be serious financial or other ramifications for your business if it is stripped of its trademark protections by the USPTO. It would not prevent your business from continuing to use the mark, but it does not give your business the benefits of federal registration, such as discouraging others from infringement, granting the right to use the ® symbol, entitling you to certain statutory damages in the case of counterfeiting, providing a basis for foreign registrations or having the possibility of obtaining an “incontestable” mark.
Therefore, you may want to consider whether your brand name and/or logo are offensive and subject to cancelation by the USPTO. Not only could a cancelation proceeding be costly, lengthy and time-consuming, but the potential ramifications, including negative publicity and/or the effect on licensing or other contractual obligations, could be harmful to your business.
In summary, before investing in a brand, it is important to properly vet the brand name by, among other things, researching whether that brand is “offensive” and whether that is a risk you are willing to take.
