Opinion
              Detroit Lions tight end Joseph Fauria celebrates his touchdown reception with wide receiver Nate Burleson (13) during the first half of a NFL football game against the Washington Redskins in Landover, Md., Sunday, Sept. 22, 2013. (AP Photo/Alex Brandon)

Redskins Losing Their Trademarks? Not So Fast…

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Julie Hopkins
Partner, Tydings & Rosenberg, LLP
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      Julie Hopkins

      Julie A. Hopkins is chair of the firm’s IP group and practices all aspects of intellectual property law, domestically and internationally, bringing over a decade of intellectual property experience to the firm.

      Ms. Hopkins practices trademark prosecution, registration, and enforcement in the United States and worldwide, including searching and clearance of brand names, logos, slogans, and trade dress. Ms. Hopkins also represents clients in trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board.

      She is a registered patent attorney and represents domestic and international clients in patent counseling and procurement. She helps clients patent, protect, and commercialize inventions in numerous areas, including pharmaceutical and biotechnology products, consumer products, and business methods.

      Ms. Hopkins' litigation experience includes trademark, unfair competition, copyright, and patent infringement actions in the U.S. District Courts where she successfully asserted and defended against infringement claims on behalf of her clients. She also represented clients in appeals before the U.S. Court of Appeals for the Third Circuit and the Federal Circuit.

      Ms. Hopkins is intimately familiar with the needs of start-up biotechnology and high technology companies. Prior to joining the firm, she taught at the Maryland Intellectual Property Legal Resource Center (MIPLRC) with the University of Maryland School of Law. The Center, located in the Mtech Technology Advancement Program (TAP) business incubator in College Park, Maryland, provides legal services to emerging companies and entrepreneurs in the field of intellectual property law.

The Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office issued its decision in Blackhorse v. Pro-Football, Inc. on Wednesday, canceling six federal trademarks owned by the Washington Redskins. Praise and criticism of the outcome continues, but unfortunately, the law seems to be getting lost in the debate.

First, it is important to note that the cancellation of the federal trademarks does not preclude use of the trademarks and the Redskins can continue to operate under their name and logos. The Redskins have used the marks in commerce for many years, some as early as the 1930’s, and have acquired common law trademark rights through that use that remain enforceable regardless of this decision.

The grant of a federal trademark allows the holder the right to sue in federal court, the use of the ® designation, the ability to register the mark with customs and border patrol to prevent the importation of infringing goods into the country, and additional damages not provided for under common law. Enforcing common law trademarks will be more challenging, and without the enumerated benefits of federal registration, there will certainly be a financial hit, but the Redskins are able to continue use of the marks just as they had prior to June 18th. Furthermore, the appeals process could take years, and all the while the federal marks remain valid and in force.

Second, there has been much discussion about the attitudes and views today about the disparaging nature of the Redskins marks and their use as a racial slur offensive to Native Americans. Recently, President Obama and 50 Democratic senators called for the team to change its name. Senate Majority Leader Harry Reid (D-Nev) has been the most vocal, recently stating he would not attend a Redskins game until the team changed its name. However, the public’s (and politicians’) views about the offensiveness of the name are not relevant in the trademark analysis.

Administrative Trademark Judge Bergsman summed it up perfectly by saying in his dissenting opinion, “To be clear, this case is not about the controversy playing out in the media, over whether the term “Redskins” as the name of Washington’s professional football team is disparaging to Native Americans today … [the narrower legal question is] whether the evidence made of record in this case establishes that the term “redskins” was disparaging to a substantial composite of Native Americans at the time each of the challenged registrations issued.”

Public opinion may ultimately sway the owners to change their name, but Redskins’ owner Daniel Snyder has remained adamant that he has no intention of doing so. NFL Commissioner Roger Goodell has begun discussions listening to groups and fans who oppose the name. As with most businesses, I expect that decision will come down to money. If it is in Snyder’s financial interest to change the name or if public opinion bears down heavily on the Redskins and the NFL, expect to see a change.

Pro football’s attorney has indicated they intend to appeal the decision to the U.S. District Court for the Eastern District of Virginia. This is not the same court that heard the appeal the first time around in Pro-Football v. Harjo, due to a change implemented by the Leahy-Smith America Invents Act. While the decision to reverse was ultimately based on a petitioners’ delay in filing the cancellation proceedings, the U.S. District Court for the District of Columbia held that the underlying TTAB decision to cancel the marks as disparaging at the time the registrations issued was not supported by substantial evidence. This is important because in Blackhorse, the petitioners relied mostly on the same evidence as in Harjo.

I would not be surprised to see a similar analysis and conclusion by the Eastern District. This is further supported by the dissenting opinion of Administrative Trademark Judge Bergsman. Judge Bergsman took aim at the evidence offered and found it was insufficient to support an order to cancel the registrations as disparaging. Without a consensus from the TTAB, the Redskins’ chance of success on appeal looks promising.