On June 18, the United States Patent and Trademark Office cancelled six trademark registrations owned by Washington D.C.’s National Football League franchise, because they use the word “Redskins.” The Trademark Office action was based on its finding that the word “Redskins” is disparaging to Native Americans — and the federal trademark law, called the Lanham Act, does not permit the registration of trademarks that are offensive or disparaging.
This action seems to have created the public misconception that the football team can no longer call itself the Redskins. That is not so. However, the action of the Trademark Office does create a good opportunity to explain what trademark rights are, how they are created, and the difference between trademark rights and trademark registrations.
Sources of Trademark Rights
Trademark rights arise from actual use of a mark in commerce, not from registration of a trademark with a state or federal trademark agency. There are two types of trademark rights—“common law” rights and “statutory” rights.
Common law rights are created by actual use of a trademark. The strength and geographic scope of common law rights depend upon where and how the mark has been used.
Statutory rights are created by registration of a mark with a state agency or with the United States Patent and Trademark Office. Registration does not create trademark rights. Instead, registration gives notice to others that a trademark is in use, and it provides the trademark owner with an effective legal mechanism for preventing others from using the owner’s mark. However, a trademark does not need to be registered for the owner to take legal action to prevent others from making use of, or “infringing” on, the trademark.
The Washington NFL team has used the “Redskins” nickname and trademark for decades, all over the United States and probably all over the world. That actual use has created very strong and very broad trademark rights. The team has also registered the trademark with the Trademark Office, which allowed the team to use federal laws to enforce its trademark rights, in court, against those who tried to use the mark without the team’s permission.
What Does Cancelling the Trademark Actually Mean?
Cancellation of the federal registration does not mean that the football team cannot use the “Redskins” trademark. It simply means that the team cannot use the federal trademark laws to enforce its trademark rights. In addition, the decision of the Trademark Office, which is a federal agency, can be appealed to the United States District Court in Washington, D.C., and the team’s federal trademark registrations will remain in full force during the appeal. Even if the courts ultimately agree with the Trademark Office, the team will still own its common law trademark rights and can use those rights to try to prevent others from using the “Redskins” trademark on goods and services—because trademark rights arise from use and not from registration.