What does the Redskins Cancellation Mean for My Business and Trademarks?

The US Trademark Trial and Appeal Board recently cancelled several Washington Redskins trademarks on the grounds that at the time these marks were registered, they were disparaging or offensive. This means the marks should have never been registered. 

What this means for the Redskins:

If this decision holds up after an appeal, the team will be able to use its marks but lose federal protections for its trademarks.  Federal registration benefits include the legal presumptions of ownership and of nationwide scope of rights in these trademarks, the ability to use the federal registration ® symbol, and to record the registrations with the U.S. Customs and Border Patrol Service to block importation of infringing or counterfeit foreign goods.

In the worst-case scenario of losing the federal registrations, the Washington Redskins would still be able to rely on the lesser protections from state and common-law trademark law.

What this means for your business:

Likely nothing.  Federal trademark law prohibits registrations of disparaging or offensive marks, but also:

  • Generic terms (CRACKER brand crackers);
  • Terms that are merely descriptive of the goods and services offered (HIKING MAGAZINE for a magazine about hiking);
  • Surnames (no one can get an exclusive right to a surname except sometimes if it is very distinctive).  After a period of extended use and lots of advertising money, surnames can acquire distinctiveness and be allowed to be used (GALLO wines);
  • Geographically descriptive or misdescriptive names (DURHAM medical devices for devices manufactured in China or even for devices manufactured in Durham – in this case, Durham is merely descriptive of where the devices are names and cannot be registered);
  • Deceptive marks (SPEEDY LUBE AND REPAIRS for a repair shop that makes you leave your car overnight);
  • Flags or national or state insignia;
  • Insignia of a government agency, or of certain organizations protected by law;
  • Another person.  If you attempt to register a mark which appears to be someone’s name, you may be required to state that no such person exists (there never was a “Mrs. Butterworth“), that the person is long dead (“Ethan Allen” for furniture) or to supply a written permission from the person named.
  • A US president’s identity while he or his widow are living (but watch out for rights of privacy, which is separate from trademark law);
  • Famous marks.  You cannot register KODAK for bicycles.  The KODAK mark for chemicals and photographic supplies is so famous, everyone would think the same company now sells bikes.
  • “Clever” misspellings of any of the above.