‘Redskins’ trademark decision a symbolic victory

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For two decades, native American activists have been fighting to force the Washington Redskins to change its name, which to many is the worst racial slur in the world of professional sports, with the Cleveland Indians' grinning mascot Chief Wahoo perhaps a close second.

So it is understandable that on Wednesday, they would hail a landmark decision by the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office that calls for the National Football League franchise to be stripped of its registered trademark because it is "disparaging."

The decision comes as a tide of opinion against the team's name – that now includes 50 U.S. senators and President Barack Obama – continues to rise.

But trademark experts say the ruling will have little impact on the team's ability to keep selling its branded merchandise, or on its ability to go after anyone who violates its trademarks with knockoffs.

The Washington franchise's trademark lawyer, Bob Raskopf, issued a defiant statement vowing to appeal and defeat the ruling, a process that could take years and leaves the trademarks intact for now. Mr. Raskopf, who says the ruling would have "no effect" on the team, also pointed out that a similar ruling in 1999 was overturned.

Even if the ruling against the team is eventually upheld, trademark lawyers say, the team could still take anyone to court for producing unlicensed merchandise – although some suggest this could potentially become more difficult without the ease of registered federal trademarks to rely on.

"Even if you don't have a trademark registration, you still have enforceable trademark rights, simply by virtue of using your mark in the marketplace," said Eric Macramalla, a trademark lawyer with Gowling Lafleur Henderson LLP in Ottawa who blogs on sports law for TSN.ca. "… Anybody who uses the Redskins name on merchandise or things like that should expect to receive a cease-and-desist letter."

The NFL's revenue from merchandising is pooled by all of the league's teams, with the exception of the Dallas Cowboys, meaning any decline, if there was any, would be spread across most of the league.

"The suggestion that their licensing revenue would be impacted by this decision, I very much doubt that," said Toronto lawyer Cynthia Rowden, head of the trademarks group at Bereskin & Parr LLP, who called the ruling more of a symbolic victory.

Lower level sports teams, including many U.S. college teams, have faced pressure to abandon names offensive to native people, resulting in a growing list of renamed squads and obsolete mascots. Efforts to force an Ottawa-area youth football team, the Nepean Redskins, to stop using its name succeeded last year after it faced a human rights complaint.

The Washington NFL team's "disparaging" trademarks remain completely valid in Canada, according to the Canadian Intellectual Property Office's online database; as do baseball's Cleveland Indians trademarks, which includes the smiling face of Chief Wahoo, first filed for registration here in 1982. The Edmonton Eskimos of the Canadian Football League have also trademarked their name, but the team has have not faced the same scrutiny as Washington's NFL franchise.

Lawyers say Canada's trademark regime could allow a similar trademark challenge here, but no such case has ever been attempted. In order to defeat the Washington team's trademarks, lawyers had to show they were considered "disparaging" when the trademarks were first registered between 1967 and 1990. In Canada, a trademark would have to be shown to have been "scandalous, obscene or immoral" at the time it was registered.

"That's a very little tested provision of our Trade-marks Act," said Daniel Glover, an intellectual property lawyer with McCarthy Tétrault LLP in Toronto, and a self-confessed fan of Washington's NFL team who admits being divided about the name. "There might be somebody out there interested in making new law."

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Redskins Trademark: A Primer on the Cancellation

The U.S. Patent and Trademark Office's decision to cancel the Washington Redskins trademark registration will probably increase calls for the NFL team to change its name.

It will not legally force the team's owner, Daniel Snyder, to abandon the name, and it will not prohibit him from using the name to make money by selling merchandise. But it could weaken the ability of the team and the NFL to stop others from using the name.

Q: What is the rationale for the Patent and Trademark Office's decision?

A: The office is charged with enforcing the Lanham Act, which among other things restricts granting trademarks that are deemed disparaging.

Q: Didn't the Patent and Trademark Office already rule on the Redskins issue?

A: Yes, in 1999, it also said that the Redskins name was disparaging, but the decision was overturned on appeal in part because the petitioners were deemed to have waited too long to file their case. The case was refiled with younger petitioners in 2006.

Q: How will the Patent and Trademark Office's decision this time affect sales of Redskins merchandise?

A: In the short term, not at all, because the Redskins plan to appeal the decision. In 1999, when the Patent and Trademark Office made a similar decision, it took four years before it was overturned. Until the team's appeals are exhausted, the registration of the trademark will be held intact.

Q: If the team loses its appeal, then what?

A: The team will still be able to keep its name. The ruling only applies to the name Redskins, so any logo solely with the Native American chief, like the emblem on the side of the helmet or on the turf at FedEx Field is still protected.

The team will also retain its common law rights, which would allow it to sue any organization or corporation attempting to use the name without consent. This may cost the Redskins more money and time, and it is possible courts may rule against the team.

Q: Will some companies try to exploit the team's lack of federal trademark protection?

A: Undoubtedly, some companies will try to do so given the active market in sports merchandise and the flood of counterfeits from overseas. Without federal protection of the Redskins name, U.S. Customs and Border Protection would no longer have to block the import of counterfeit goods, though the Redskins could still sue counterfeiters.

Q: Who stands to lose if counterfeit jerseys and other gear proliferate?

A: In theory, if more counterfeit Redskins gear is available, it will hurt companies like Nike, which has the exclusive license to sell NFL gear. All NFL teams except the Cowboys (who have their own merchandising deal) could also be hurt if sales of Nike gear declines, because merchandising revenue is shared equally among the teams.

Q: What if the team changed its name?

A: The team could make money if it changed its name because sales of existing Redskins gear might be scooped up by collectors, and fans are likely to spend a lot of money buying new gear.