Washington Redskins Lose Federal Registrations: How Can They Protect Their Trademark Rights?
The Trademark Trial and Appeal Board (TTAB) announced today its decision to cancel six federal trademark registrations owned by Pro Football, Inc. (The Washington Redskins), ruling that the term “Redskins” was disparaging of Native Americans, when used in relation to professional football services, at the time the various registrations were issued. Blackhorse v. Pro Football, Inc.
This decision does not require the Washington Redskins to change its name or stop using its six trademarks. Rather, the cancellation of the registrations means Pro Football, Inc. will lose the legal benefits from federal registration of the marks. These benefits include:
- The legal presumption of ownership and of a nationwide priority rights in these trademarks;
- The ability to use the federal registration ® symbol; and
- The ability to record the registrations with the U.S. Customs and Border Patrol Service to block the importation of infringing or counterfeit foreign goods.
Although the Washington Redskins lost its federal registrations, it still has common law rights in its trademarks and should continue to protect those rights. Here are a few strategies the team (and other trademark owners) should consider to maximize their common law (unregistered) rights:
- Use your trademark. To get trademark rights, you need to use your mark as an identifier of source. This means you need to use your mark on the actual goods you are selling or on your website or at the point of sale for the services you are offering. Your use of the mark with the goods or services should be prominent and obvious. Failure to use your mark will result in loss of your rights in the mark.
- Use the “TM” Symbol. Claim rights in your trademark by using the “TM” symbol. This symbol tells competitors and potential competitors that they should keep their distance because you are serious about protecting your trademark rights.
- Enforce your rights. Don’t let third parties use confusingly similar marks in your market space. Send demand letters and file infringement claims. If you allow these confusingly similar marks to exist for a long time, you risk giving up your trademark rights.