This is the Redskins’ appeal of the TTAB decision cancelling their REDSKINS registrations. This is a de novo appeal to the US District court in the Eastern District of Virginia.
Things to think about with regard to yesterday’s TTAB decision cancelling the REDSKINS registrations:
1. The TTAB proceeding is not the main event.
The interplay between First Amendment protections and other laws leads to, uh, uneven results. A federal court can enjoin use of the mark WASHINGTON LOUIS VUITTONS, as infringing speech can be regulated. A court could possibly enjoin the use of WASHINGTON LET’S KILL ALL THE REDSKINS, to the extent it constitutes a true threat to commit harm, can be regulated. But a federal court can’t enjoin the use of merely offensive speech, such as WASHINGTON REDSKINS.
So Blackhorse v Pro-Football, like Harjo before it, cannot be aimed at the center of the target. It may be procedurally interesting, and symbolically significant, but it doesn’t affect use of the mark. So don’t get all that worked up about this decision.
2. The cancellation of the registrations would be a factor, but not a determinative one
First, if every novel issue in this proceeding gets appealed, we will not see finality of the cancellation for years.
Second, it is uncertain how a federal court would enforce the remaining common law rights. Of course certain Lanham Act rights would no longer be available (certain counterfeiting remedies, for example).
Also, some licensees require licensors to maintain registered rights. So interpreting those clauses will be fun, here.
An interesting aspect here (if the registrations are ultimately cancelled) is the increasing importance of registrations, when asking intermediaries to enforce tademark rights. You need a registration when utilizing the various dispute resolution policies of a Google, Amazon, eBay, ICANN, etc.
So cancellation of the regs would be an expensive nuisance.
3. How this dispute ultimately resolved
Unless the owner of the team has a vision on the road to Damascus, this ends when the NFL says to him: ‘enough’. When does that happen? Bear in mind that certain NFL revenue streams are shared equally by the teams so certain reductions in those streams are shared equally. So this ends when it costs the NFL enough money to outweigh whatever point it thinks its making by ‘standing firm.’. When you email Bob Raskopf at Quinn Emmanuel ([email protected]) and say:
I know you’re doing your job, so this isn’t directed at you personally. Please pass this information along to your client:
When I see that goods or services are ‘the official’ whatever of the NFL, I don’t buy them.
I told my kids they can’t buy NFL licensed merchandise (and besides, Tim Duncan and the Spurs are better role models).
When we watch NFL games, we DVR them and skip through the commercials.
So without speaking here to Washington’s owners beliefs in his position, he should include this in his calculus.
Your name here
[NY Jets fan throw in a P.S. here about their annoyance with the Jets passing over Manziel in the draft]
So Monday night was ‘Meet the Bloggers X.’ First, a tip of the hat to Marks & Clerk for sponsoring the bash.
As a co-founder of this event, I have always said a few words to the ever-growing throng. Up till now, I’ve merely said a few thank-yous, and then introduced the bloggers and tweeters in attendance. This year I determined there were simply too many blogs and TWITTER feeds to read out (and I always inadvertently omit a few). So what to say? The problem is I’ve always resisted the impulse to say anything more serious than ‘gosh, it’s great that you guys blog, too.’
This year however, a notion occurred to me I thought worth saying out loud to this particular group, given that the attendees represent a significant percentage of thought-leaders within the trademark community (or at least, re-tweeters of thought leaders).
So I said the following:
The REDSKINS trademark is racist
The continuing resistance to change it is hurtful
The mark should be abandoned
I will do what I can to not empower that trademark owner
OK, we’re at a cocktail party, and some people were shocked (I’m told). But, IMHO, there aren’t too many other venues for the trademark community to discuss this, in this manner. During my talk, I related an incident when I was a third or fourth year, and I told the senior partner that I was uncomfortable doing work for a tobacco client, He said that that was admirable and that I should get back to work. And I had a mortgage, so I did. So I know that it’s unrealistic that people are going to advocate at the office water cooler on this issue (or quit their jobs).
And, I was fairly specific that this issue is not an INTA thing. INTA’s mission is to advocate on behalf of brand owners. INTA (properly) doesn’t take political positions not directly related to that mission. To quote Michael Jordan on why he wasn’t more active on race issues: “republicans buy shoes.”
Having said that, the general notion that social responsibility burnishes a brand, wouldn’t be heretical at an INTA conference. What would be heretical is the suggestion of any sort of coercive action against a ‘bad’ brand owner. And again, this is understandable. A large brand owner is justifiably paranoid that if they come for that brand, what stops them from coming for my brand. Hey, they’re trying to ban 32 ounce sodas in my town, so it’s not an outlandish fear.
So the blogosphere and Twittersphere seems to be among the few places where trademark attorneys in their individual capacities can say what’s on their mind on this particular topic, and Meet the Bloggers seemed to be a good place to bring it up.
Now, IPKat has discussed my talk and framed the decision to abandon as a dichotomy between ‘racist’ arguments and ‘branding’ arguments. I agree with IPKat’s branding arguments. During my talk, I intended to imply that when I said that if I were representing the Redskins (pause for laugh about that ever happening now), I would advise them to undertake an orderly migration of the brand. By that I meant that the brand protection argument should have been sufficient. I cited the Richard Sherman incident from last week as the latest evidence of the hit the brand is taking. If you don’t have ESPN on 24 hours a day as it is in my house, you may not know that Richard Sherman, of the Seattle Seahawks, said that the NFL would never handle the Donald Sterling incident as the NBA did, as long as it allowed the REDSKINS trademark to be used.
And my point was: that is real dollars and sense tarnishment of not just the REDSKINS brand, but the NFL brand.
So sure, the IPKat is correct about the branding rationale. And we know from watching sports teams that change their logos and team colors, that re-branding can result in higher merchandise sales.
And we also know that teams that change their names, like the Washington Wizards (formerly the Bullets), can ultimately make the playoffs.
However, I would believe that trademark lawyers have already made these points to the trademark owner. At a minimum, the re-branding arguments would provide a fig leaf to the trademark owner to make the change.
But there’s no appearance of movement on the part of the owner. So I don’t think there’s much point to deliberating the branding rationale at this point. Change will not come from within.
If I had to guess, I think this gets resolved when the cost of keeping the name becomes too high not only to the team, but to the league. As I said, I will do what I can to not empower the trademark owner. Now, I don’t buy Washington merchandise (or much NFL merchandise for that matter) and I’m not a Washington season ticket holder. I’m not even a football fan, I’m a Jets fan (baroom boomp). But I can say out loud what I think is the right thing to do.
And the reason to do that is sort of the inverse of the brand owner paranoia. If I say what I think the right thing is when I don’t have skin in the game (pun intended), then maybe others will say it, when I do.
I hope you will say what you’re thinking, as well.