As the United States gets ready for the Independence Day holiday, a recent decision of the USPTO's Trademark Trials and Appeal Board (TTAB) to cancel Federal registrations consisting of or incorporating the term REDSKIN reveals a country with differing views on a less celebrated tradition.
The decision to cancel six registrations, used by the Washington Redskins NFL team, on the grounds that the REDSKINS epithet is "disparaging" has attracted massive media attention and divided opinion among the general public and lawyers alike.
There are those among the general public who believe that the decision is "political correctness gone mad" and it should be noted that the decision was reached on a split decision basis, with the dissenting judge finding a lack of evidence to support the claim that REDSKINS was disparaging.
On the other side, the TTAB majority was not persuaded that the secondary meaning of REDSKINS to identify the D.C. based football team stripped the word of its original offensive meaning.
Some commentators have also questioned whether the USPTO is encroaching on First Amendment (freedom of speech) rights.
This concern seems misguided when the effect of the TTAB decision (which Pro-Football, Inc., the owners of the Washington Redskins, have already confirmed they will appeal) does not and cannot force the team to stop using REDSKINS. Furthermore, if the decision becomes final, it is likely to lead to an increase in third party use of the term.
Only a court, or, indeed, new legislation, may prohibit such use and it remains to be seen whether a court will find the evidence in support of cancellation sufficient after a D.C. court ruled in a previous REDSKINS case that evidence was "insufficient to conclude that during the relevant time periods the trademark at issue disparaged Native Americans...".
If an appeal court does no more than uphold the TTAB decision, then Pro-Football, Inc. will lose the benefits afforded by trade mark registration, notably the presumption that it owns the marks and has the exclusive right to use them.
Although this will undoubtedly embolden unauthorised merchandisers and cause anxiety among existing licensees, the impact of the judgment should not be overestimated. The team has never owned a federal registration for WASHINGTON REDSKINS in respect of "clothing" (an application from 1992 remains suspended following a letter of protest) and, under the Lanham Act, the US statute governing the use of trade marks, action can be taken by owners of unregistered trade marks to prevent consumers being misled or deceived as to the origin of goods.
As with passing off in the UK, the owner needs to show it has goodwill or reputation that has been damaged by the third party activities and, on the face of it, there is no reason why an infamous mark should be any less enforceable than a famous mark.