Lipton – Washington Redskin’s Trademark

Jacqueline Lipton
Jacqueline Lipton

June 18, 2014 – The United States Patent and Trademark Office today canceled the Washington Redskin’s trademark registration. In doing so, the federal agency ruled that the football team’s name was “disparaging to Native Americans.” The case appeared before the Trademark Trial and Appeal Board. University of Houston Law Center Baker Botts Professor of Law Jacqueline Lipton teaches trademark law. Lipton is also the author of Trademarks and Free Speech (Edward Elgar, 2010). She answered questions about today’s ruling.

1)      What was biggest concern for The United States Patent and Trademark Office?
The Patent and Trademark office oversees trademark registrations. The Lanham Act (federal trademark law) includes provisions that prevent registration of certain types of marks including marks that may be disparaging to a particular group of people. The cancellation (or initial refusal to register) a mark, however, does not prevent the use of the mark as an unregistered mark. It is up to the mark holder whether to continue to use the mark without registration. Thus, the USPTO focuses on what should be included on the government's trademark register, but not necessarily on the ability of a mark holder to use a mark that others may find disparaging or that may be invalid for other reasons. 

2)      Is this the first time a major U.S. sports team has had their trademark registration cancelled on such grounds?
No. These same marks had their registrations cancelled previously, but courts later overturned the cancellations on other grounds. There was no definitive holding that the marks were not necessarily disparaging to Native Americans.

3)      What does this mean for Washington Redskins in terms of their ability to use the name and logo going forward and to profit from such use?
The Washington Redskins will likely continue to use the marks while they appeal the decision. I believe the registration will stay in place pending the appeal.

4)      Why is this case significant and what affect is it likely to have?
It is significant in the sense that it brings a sensitive social, political and cultural issue into sharp relief. It is not a new issue by any means, but the focus on the interpretation of 'disparaging', as opposed to other grounds to oppose registration of a mark, is an important debate to have and the detail with which the TTAB examined evidence of disparagement provides a useful basis for more detailed consideration of these issues.

5)      What happens next as far as Washington Redskins? Will they appeal further?
Yes. They have stated that they will appeal the cancellation. They have had these registrations cancelled previously so this is a procedure they have engaged with before.