So reports the NYT on a decision by the Trademark Trial and Appeal Board (TTAB, in trademark lingo). Some Native American groups filed a lawsuit to cancel the NFL team’s long standing trademark (dating to 1967 and 1990) by alleging that the mark disparages people, or brings them into contempt or disrepute. And that Court said yes, the trademark is disparaging to Native Americans, so it should be cancelled.
Trademark Law 101
By way of background, U.S. law grants trademark protection to marks (e.g. logos, slogans, pictures, or phrases) used continuously in the stream of commerce in a particular context by someone in a distinctive way. So if you have a logo or slogan that you use on your website, business card, letterhead, company shirts or hats, or other items, you can get a limited monopoly (a trademark) to use that logo or slogan, and prevent others from using it in the same context or other contexts where it would be confusingly similar to an average person. (Note confusingly similar is different from the parallel copyright and patent law infringement standards.) Protected trademarks are labelled “TM” or “®” and service marks (usually slogans) are labelled “SM.” International trademark protection arises under a different, but related legal regime. Individual states also offer trademark protection, for substantially less cost than U.S. trademarks, but state protection only applies within the state’s borders.
No Trademark Protection/Canceling Trademarks
But trademark protection can’t be granted for marks that are immoral or scandalous, that disparage people, or that bring people into contempt or disrepute. IP lawyers have read the (amusing) cases and seen the pictures of various logos and slogans that didn’t make the cut. This decision indicates that the controversy over the NFL team’s name and alleged disparagement of Native Americans may be percolating into making race or ethnic background into a category of banned trademarks (the previous challenge of the Redskins’ trademark appears to be the first trademark cancellation for race or ethnic background). That may be a positive trend – Americans probably don’t want someone trademarking a neo-Nazi logo or a racial slur. It may also reflect a new legal cause célèbre (over other, less worthy or socially sympathetic causes) – one can’t easily imagine a group of pirates winning a disparagement lawsuit to cancel the Captain Morgan’s Rum trademark. The Founding Fathers (or modern politicians) couldn’t trademark mud slinging logos or slogans attacking their opponents. But how far do we go? Canceling a trademark is a step towards curtailing or banning products or manifestations of people’s free speech and press. And the Courts (and American people) have traditionally taken a broad, liberal view on free speech and press.
Canceling a trademark 24-47 years after the U.S. trademark protection was granted raises a precedent or reliance question. Was the mark always disparaging or scandalous or casting a bad light on people? If it was originally ok, when did it go bad? Have people come to recognize and rely on the mark as a sign of bona fide goods or services (e.g. authentic NFL apparel, a professional football team, etc)? Canceling a trademark a generation after the fact begs the stare decisis question – Latin/legalese for “let the decision stand,” respect for precedent. Courts are reluctant to overrule previous decisions just because a party says (or even proves) they got the law wrong before. Law requires stability and order, which you don’t get if you reverse or change every bad legal decision ever made. In several high profile cases, the Supreme Court has refused to overrule a decision that was admittedly bad law because people had come to rely on it. Other times, the Court will overrule a case because things have changed or the old case burdens rights or liberties. Does a similar principle apply to trademarks and consumers? Should it?
Déjà Vu and Appeal
As the article notes, the Washington Redskins’ trademark lawyer anticipates appealing the ruling, and he says this is déjà vu – they’ve been there, done that on trademark cancellation some years ago. And even if the trademark is cancelled, the team could still use the name, logo, and other manifestations of the mark – they just wouldn’t be protected under federal law from infringement (e.g. unauthorized use by others), which could cause confusion for consumers.
This KC Business Journal article explores the implications for the Chiefs, our hometown NFL team. Forbes has this article. KCUR, KC’s NPR affiliate, had this report. UCLA Law Prof. Eugene Volokh had this analysis. And The Wall Street Journal and NYT have dueling editorials – NYT and WSJ.
My law firm, Johnson Law KC LLC, has experience working with individuals, companies, and nonprofits on state and federal trademarks. If I can help you navigate the waters of trademark law, give me a call (913-707-9220) or email me (firstname.lastname@example.org) for a free, convenient consultation.
(c) 2014, Stephen M. Johnson, Esq.