That’s the law. If you want to invalidate a registration for being disparaging under Section 2(a), you have to show that it was disparaging at the time it was registered.
Weird. You’d think there would be some kind of statute of limitations on that. I mean if I can find that Coca-Cola’s trademark was disparaging in 1893 when it was issued I could get Coca-Cola’s trademark revoked? Seems nuts.
But ok…so trademark revoked because it was deemed disparaging when it was issued.
Could the Washington Redskins just put in another application today and get a “new” trademark (assuming it is no longer deemed disparaging)?
(1) There is no explicit statute of limitations on such actions as such. However, there is the doctrine of laches, which says you can’t wait too long to bring a claim. The previous action lost on laches because the court said that the petitioners had spent too much of their adult lives not petitioning for cancellation.
(2) You can’t get a trademark revoked. You can only seek to cancel a registration. They’re not the same thing. Even if Coca-Cola somehow lost its registration on grounds of disparagement I can’t believe that just anybody could start calling their products “Coca-Cola” because that would become a serious consumer fraud issue. Losing a registration for disparagement doesn’t suddenly make your trademark generic.
No. “Registration cancelled.” A trademark cannot be “revoked.” A trademark is not created by a registration. A trademark and a trademark registration are related but they are two separate things.
I’m being annoying about this, but it’s important. You don’t "get a trademark " by filing an application. You register a trademark that already exists by filing an application.
When the Redskins got their first registration in 1967, it was for a trademark that they already held enforceable rights in and that had existed for 35 years already.
Theoretically they could apply for a registration and argue that it’s not disparaging now.
They of course also have to show all the other things that prove you hold valid trademark rights – again, you have to show you have a valid trademark before you can register it. Registration doesn’t create the valid trademark.
What rights are associated with an unregistered trademark?
You can bring actions for trademark infringement, dilution, unfair competition, false advertising, etc., under state or federal law, just like you can with a registered trademark.
OK, so what can you do with a registered trademark that you can’t with an unregistered one? Just what will the practical effect of this decision (assuming it’s upheld) be on Snyder’s team?
Before I answer that question let me say that the more that I think about it, the more I believe that Snyder won’t lose his unregistered trademark rights. He’ll still bd able to enforce them but it will become slightly more of a pain to do so. For an organization as big as the NFL, it won’t be a financial barrier to enforcing its rights, but they might rather just have him change the name.
So, what are the disadvantage of having an unregistered trademark, as opposed to having a federally registered trademark – some if the big ones are –
– with an unregistered trademark, you have to prove the geographical bounds if your trademark rights. With a federal registration, you get a presumption of nationwide rights.
– once you have had your federal registration for five years, it becomes “incontestable,” meaning that certain attacks on the validity of your trademark rights won’t work. (But there are still plenty of other ways that aren’t blocked.)
– you automatically get federal jurisdiction. Without a federal registration, you either have to due in state court or prove that there is diversity jurisdiction, that is, that your opponent is on a different state.
– if you have a federal registration and you show that the infringement was willful, you can get treble damages (meaning the court might triple any money award that you might win)
– you get certain presumptions that you are the valid owner of the trademark and that it is enforceable. These presumption can be rebutted but the burden is shifted to the defendant to prove that.
I think we can say that there are a relatively small number of people who are really offended by the name, a small number of people who are dedicated to the name and a large number of people who are apathetic about the name. However, that large group of people in the middle are getting sick of this issue. They know that Bob Costas is going on his soapbox during one of the Sunday night games, they’re tired of their local newspaper and national media using “Washington football team.”
For anyone reading this thread and think you have insights that go beyond what Acsenray has provided, you have to remember he’s an intellectual property lawyer and eats this stuff for breakfast. Just saying…
I think they should change the name to the Washington Idahos.
My major question on the difference between a registered and unregistered trademark has been answered so I only have a question about the quoted part above.
I am having a hard time parsing that. How was this group fighting this trademark deemed to have been ok on the taking so long to challenge this?
The plaintiffs in this case were all minors when the trademarks were registered and therefore laches does not apply until they reached the age of majority and could begin the action.
Saw this on Twitter. Think it is perfect:
Top Conservative Cat @TeaPartyCat · 8h
#NewRedskinsName The Washington Supremacists
To be clear I believe you on this explanation. What follows is my incredulity at the rationale of the court.
How the hell can that be? I think it is safe to say there were adult native Americans living at the time who did not see fit to challenge the trademark.
Is the court suggesting that each new generation can challenge a trademark if they were not alive or of age to challenge it when it was granted? That seems crazy and would seem to make a joke of “laches” mentioned earlier.
Again, I am NOT arguing about the facts of what happened. Just expressing dismay at the reasoning. Hopefully someone can explain to me how it all really makes sense.
An equitable doctrine like laches can apply only to individuals before the court.
In the earlier action, the appeals court counted the number of years from the petitioners’ 18th birthdays and said “you’ve waited too long. You don’t have standing to pursue this claim.”
Since laches is a standing issue, there was never any consideration of anything else in the matter. The only question answered was that these petitioners couldn’t go forward with their claims.
So in the current action they found younger petitioners, who wouldn’t be barred by laches.
It’s not really an injustice of any kind because once you do get past the standing issue and find one set of petitioners that can press the substance if the claim, the question is still the same – “Were these terms disparaging at the time they were registered?”
Once that question gets a final answer – whether it’s yes or no – you can’t have repeated generations of petitioners going back for another try.
But by this rationale it seems you will always have younger petitioners available to bring a lawsuit. There will always be someone who wasn’t alive when the trademark registration was granted but upon reaching the age of majority wants to sue to have that undone.
Given this why couldn’t I (or probably someone closer to 18 than me) be able to bring a lawsuit against Coca-Cola to remove their 1893 trademark grant (pretend for the sake of argument)?
Standing isn’t the sole legal doctrine that prevents a court from reaching the merits of a claim. There is, for example, the doctrine of collateral estoppel, or claim preclusion.
Say this current action goes all the way up and the valid final judgment is – “no, these trademarks were not disparaging at the time they were registered.”
And then another person comes along with a new cancellation petition on the same question, the court’s going to say “Pro Football Inc. already has a valid final judgment on this question from before. Collateral estoppel applies. This claim is precluded.” End of story.
Maybe you could have someone try it – once – if it had never been brought up before. I can’t off the top of my head rattle off every possible challenge to such a claim, because this is a complex question of civil procedure – we’re no longer talking about intellectual property law, which is what I know about.
IANATL but it would seem that these younger petitioners would have no standing because of no harm alleged. If the question is “was the trademark offensive in 1967?” and the Petitioner wasn’t even alive in 1967, then he cannot claim harm from the 1967 registration.
He may claim that the ongoing existence of the trademark disparages him, but it seems that isn’t the proper question. By allowing younger petitioners to bring this claim it creates an absurdity in the courts. As Whack-A-Mole noted, perhaps a 40 year old might not be able to bring an action against the Coca-Cola corporation because he has waited 22 years past his 18th birthday. But a 19 year old could bring litigation claiming harm from a registration that happened over 100 years ago?
The provision of the statute authorizing cancellation petitions, Section 14(3), doesn’t require a showing of personal harm. It permits anyone at any time to argue that the term was disparaging to a substantial component of the relevant population at the time it was registered.
This has been limited by the equitable doctrine of laches to prevent some people from having standing, but there’s no way to insert a personal harm requirement where it clearly was intentionally left out.
And why was it intentionally left out? Because the policy consideration behind the cancellation provision is that the law doesn’t want a registration to continue to exist if it should not have been granted in the first place. The law wants to encourage people to challenge bad registrations.
And this doesn’t just apply to the notion of disparaging or offensive terms. It also applies to other things that make a registration bad, like genericness. Indeed. With genericness, you aren’t restricted to whether the term was generic at the time of registration. You can argue that it has become generic.