It's the topic of the day: the United States Patent and Trademark Office has invalidated the Pro-Football, Inc.'s trademarked variations on the Washington Redskins name, calling the term "redskin" derogatory. The ruling, if it stands, invalidates the team's ability to protect its intellectual property and brand and effectively forces a change that many in Congress and elsewhere have been requesting for years.
What does the opinion mean for the team, and more importantly, for your company's ability to protect its IP? Let's do a little Monday Morning Quarterbacking of the opinion and the football team's strategy:
1. Don't Expect a Repeat of the NFL Team's Last Appeal
The opinion begins by reminding us that we've been here before: Harjo v. Pro-Football Inc. In the previous contest, the challengers to the Redskins trademark were initially successful before the USPTO, but the district court reversed, finding that laches barred the claims and that the evidence was insufficient. Subsequent appeals limited the issue to laches only, and found in favor of the team.
This case was brought to correct the laches issue. According to the D.C. Circuit, the correct measure for laches dates from when the petitioner reaches the age of majority, not when the trademark was filed. The youngest person Harjo reached the age of majority in 1984, seven years and nine months before the trademarks were challenged. This time, the challengers picked their petitioners more carefully, so laches is not an issue.
2. Not a Guaranteed Victory for Either Side
Though the NFL team's previous defense, laches, is now off the table, that doesn't mean defeat is a certainty. Last time, the district court also found that the evidence was insufficient to show that "Redskins" is disparaging (the grounds for invalidating the trademark). A similar holding could be in the works, since this ruling was based on a stipulated adoption of the Harjo record.
Indeed, the dissent here made just such an argument, and it will probably be the team's strategy on appeal.
3. Watch Your Stipulations and Waivers
Speaking of stipulations, the parties here stipulated to adopting the entire Harjo record, with no right to object other than on relevance grounds. That meant a number of objections, including hearsay, were off the table, and evidence that previously had a limited purpose, could now be evaluated "for the truth of the matter asserted."
As the majority put it, in a footnote: "[T]he hearsay objection has been waived in this proceeding, which has resulted in a qualitatively different evidentiary record for us to consider."
4. Doesn't Legally Force a Name Change
This may be obvious, but it bears repeating: this isn't an order to change the team's name. The USPTO opinion merely wipes out the federal trademark protection, which means if the team wants the ability to protect its intellectual property and brand, it'll most likely need re-branding. There is also the possibility of protecting the trademark under state laws, but the state-by-state approach seems both cumbersome and expensive.
5. Don't Let Stubbornness, Pride Interfere With Business
The controversy over the Redskins name has been going on for decades now. Does anyone think that the team would've faced USPTO trademark invalidation proceedings if it had changed its name earlier? We know, the existing name has decades of history, brand recognition, and goodwill, but it doesn't have to be a drastic change, like the Washington Bullets becoming the Wizards: switch to a tribe's name (with permission), or to a non-disparaging synonym.
Instead, if this ruling is upheld, there is no federal trademark left, which means business-wise, the only move is to change your name. Otherwise, the team will be powerless to fight bootleg merchandise. Even then, it'll be open season on vintage or "throwback" gear. Had the team changed the name, and kept the trademark, at least the nostalgia revenue stream would've remained.
6. The USPTO Can Make Anything Boring
Having trouble sleeping? Try reading the USPTO's opinion, which takes an issue that should be fascinating (the evolution of a racial epithet from semi-socially acceptable in the early 20th century, to arguably racist today) and turns it into a laundry list of dictionary definitions, surveys of newspaper articles, and the politics of lexicography.
Have a favorite part of the opinion, or a note we missed? Tweet us @FindLawLP.
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