Sportscasters, bloggers, and even people who know better trumpeted the news: The reviled trademark name of the Washington Football Club had been “cancelled,” “killed,” rubbed out, doomed. In breathless euphoria, the stories waxed heroic on the demise of team owner Dan Snyder’s campaign to preserve a team name at the center of political controversy, with ESPN.com going so far as to claim that the team name “will no longer be protected under federal law.” The good folks over at CNN/Money went with the snarky suggestion that “If you want to start selling T-shirts with the Washington [team’s] logo without permission, you may be in luck.”
The decision is not nearly as momentous as the media has made it seem, however—and it will do little to compel Snyder to rechristen his team. As made abundantly clear by the judges of the Trademark Trial and Appeal Board in the opening lines of their 2-1 opinion yesterday (6/18/2014), “This decision concerns only the statutory right to registration. ... We lack statutory authority to issue rulings concerning the right to use trademarks.” And yes, the italics are the judges’.
These judges know very well what the news reports did not. The case of Blackhorse et al. versus Pro-Football, Inc. will have no legal effect on the right of the Washington Football Club to enforce its trademark. It will not stop the team, and the NFL, from going after counterfeiting of team merchandise. The team and the league will continue to collect millions in licensing revenues. The club will continue to own an incredibly valuable trademark that many abhor, a trademark that is now not just semantically, but legally, disparaging.
The key to understanding the limited nature of this case is that it concerned the “registration” of the team’s trademark, not the team’s “use” of the mark.
Under the federal trademark law, often called the Lanham Act, a trademark may not be registered on the Principal Register if it “may disparage . . . persons, living or dead . … or bring them into contempt, or disrepute.” But this barrier to registration has nothing to do with the underlying validity of the trademark itself. A federal registration gives a trademark owner the benefit of a head-start in any trademark litigation—because it means that the government has already concluded that the trademark is valid. But the registration is not itself the underlying basis of a trademark lawsuit. The trademark is. Because yesterday’s decision does not bar the team from using the mark, the trademark itself will continue to exist and be enforceable. A trademark exists and can be enforced based on whether it is being used, not whether it is registered.
A good example of this distinction can be seen in a case from last year where the trademark board also found another trademark to be disparaging and barred its registration. The case involved the trademark “The Slants,” used by a rock band of Asian musicians. Even though the board denied the registration, the band is still pounding away under its trademark name “The Slants,” having released their latest music video just last month. The loss of a trademark registration has done nothing to stop the band from using a name that the board found to be disparaging.
The Blackhorse case involved six separate trademark registrations that were issued between 1967 and 1990, each covering different renditions of the team’s name. Because this case was a retrospective challenge to already-issued registrations, the question here was not whether the team’s name is currently disparaging today, but rather whether it was disparaging at the time of the specific registrations.
The two-judge majority, after reviewing an exhaustive record, concluded that a “substantial composite of Native Americans found the term … to be disparaging … during the relevant time frame.” As a result, the board ordered the team’s trademark registrations to be “cancelled,” that is, stricken from the Principal Register. That ruling will, of course, be appealed, potentially either to the U.S. District Court sitting in Alexandria, or the Fourth Circuit Court of Appeals in Richmond, or the Federal Circuit Court of Appeals in Washington, D.C. (The choice is the team’s.)
Even if its army of litigators are unable to overturn yesterday’s ruling, the team still will be able to claim ownership of a valid and enforceable trademark. There is no prohibition in the Lanham Act against the team bringing a trademark infringement suit just because the mark is disparaging. Only registration of such a mark is banned. For purposes of infringement litigation, a disparaging trademark can still be enforced in a lawsuit. In fact, the Lanham Act itself explicitly provides a vehicle for bringing infringement suits based on unregistered trademarks, including here a disparaging one. Certainly, the lack of a registration will mean that the team must first prove that its trademark is valid. But with more than 60 years of use, the team’s trademark cannot be gainsaid.
As a result, despite what CNN/Money says, you definitely should think twice about selling knock-off Washington jerseys. The team’s trademark may well be disparaging, but it is still very much protected by federal law.
Image via Shutterstock
Christopher P. Beall is a partner of Levine Sullivan Koch & Schulz, LLP, a First Amendment firm. Mr. Beall teaches media and trademark law and the Sturm College of Law at the University of Denver.