Last week, the U.S. Patent and Trademark Office cancelled the trademark registration for the Washington Redskins, an NFL football team whose name is either horribly offensive to Native Americans or no big deal to Native Americans, depending on which source you find more credible. The USPTO determined that the team’s name was disparaging to Native Americans, and under current law, trademarks that are considered immoral, scandalous, or disparaging are not entitled to Federal protection (for example, you’d have a hard time registering the trademark for Damn It All To Hell.)
Some people rejoiced that our common sense of decency would prevail. Some bewailed the overreach of the Federal government. Everyone else on the Internet started making plans to sell their own Redskins merchandise without fear of reprisal.
Anyone who really does that is going to get their legal ass kicked. The Redskins still own the trademark and can still use it. They can continue to inexplicably cling to it like grim death.
Here’s why: trademark registration is not a requirement to owning or using a mark.
As soon as you use a name or logo to sell goods or services, you have created a trademark (1). Registration is an optional (2), extra step that gives you some extra special legal benefits, like the right to sue in Federal court and the right to seek damages from infringers, but even without it you have a legal right to protect your mark. This is called “common-law trademark” and the Redskins still have it.
But, wait! There’s more! The Federal registration for the Redskins mark is not yet a done deal. The Redskins can appeal this decision in a Federal court, and while the legal blahblahblah is playing out, their mark is still registered.
So, no, you can’t market a Redskins analgesic butt cream.
But if the Redskins still own the mark, why does this decision matter? Because the team owners want all of the juicy benefits that come with registration. They want to be able to sue infringers in Federal court. They want to be able to squeeze money out of infringers (aka damages.) And nobody likes to be called a racist (3).
Which brings us to another question. If the word “redskins” is disparaging and offensive, why in the name of Sophocles was it registered in the first place?
Because the USPTO is unpredictable, and that’s what makes the process of registering a trademark so complicated (4).
It’s often hard to predict how they will come down on an issue. For instance, “JAP” was an acceptable registration, “HEEB” was not (5).
However, if you are planning on registering your own trademark, here are a few requirements that the Redskins debacle can teach you:
- Use, not registration, is what creates a trademark, ie, if you are using a brand name in association with a product or service you sell, then you are establishing common law trademark rights.
- Registration is kind of a big deal, however.
- You can’t register until you are actually using the mark to sell something. It isn’t enough to think of a cool name or design a clever logo if you don’t have a product or service for sale in connection with it (6).
- The USPTO will refuse to register your mark if it is offensive, scandalous, or disparaging to others (ie, the whole reasoning behind this Redskins decision.) However, the USPTO can be unpredictable in what they deem to be offensive (ie, how the Redskins name got registered in the first place.)
- The USPTO has many other reasons to refuse to register a mark, or to cancel a registration. Some of these are obvious (like someone is already using the mark) but most require some fancy legal moves (7).
The most important takeaway for you, the small business owner with a product or service to market, is that the USPTO giveth and the USPTO taketh away. Maybe you have a name that you feel is sassy, sarcastic, or edgy, or even an especially controversial term that you feel is not offensive when used within your specific community. If you want to register that name or logo, then prepare to fight against the accusation that it is scandalous or disparaging, and even after it is registered, you may have to spend some time protecting it from cancellation efforts.
Notes
1. Remember that a trademark is a word, symbol, phrase, etc, that identifies and distinguishes the source of goods. In English, what this means is a trademark tells people where a particular product came from. If you see a swoosh on a sneaker, you know Nike made that sneaker, and you will likely decide whether you want to buy it or not, based on your connection with the brand.
2. Yeah, that’s right, I just admitted that trademark registration is optional. You should do it anyway. Click here and allow Rachel to convince you.
3. Not even the guy who says, “I’m not racist but…” and then says the most racist thing ever.
4. I swear I’m not just saying that because it’s my job. Trademarks look easy on the surface, but if you don’t have the legal background, you won’t even see the booby traps until you fall into them.
5. I’m not saying either term is acceptable, just reporting what the USPTO deemed registrable. Don’t send me angry emails.
6. There is such a thing as an “intent to use” application, where you apply before your product is ready, but your mark won’t register until the product is actually for sale.
7. See note 4 above.
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