The landmark case was filed on behalf of five Native Americans, and it is the second time a case like this has been filed. The ruling by the Trademark Trial and Appeal Board (TTAB) relates to six federal registrations for trademarks that include the word “Redskins.”
“By a preponderance of the evidence, the petitioners established that the term “Redskins” was disparaging of Native Americans, when used in relation to professional football services, at the times the various registrations involved in the cancellation proceeding were issued. Thus, in accordance with applicable law, the federal registrations for the “Redskins” trademarks involved in this proceeding must be canceled,” the board said in their ruling in Blackhorse vs. Pro Football, Inc.
So what happens next?
The decision doesn’t necessarily put an end to the larger dispute here. The team and the NFL may ask a federal court to review the decision, and the registrations will remain “on the federal register of marks” and not listed as canceled until that review is complete.
It DOES NOT mean that the Redskins have to change the team name, or stop using the trademarks at issue. Why? Losing the federal registration of a trademark does not necessarily mean that the owner loses all legal rights in the mark. That’s because trademark rights in the United States come from use of a mark on or in conjunction with goods or services, not merely from the additional, optional step of federal registration.
It DOES mean that if the cancellation of the registrations for the trademarks at issue is not appealed, or if the cancellation is not affirmed following possible review by a federal court, the team will lose the legal benefits conferred by the federal registration of the marks. Those benefits include the legal presumptions of ownership and of a nationwide scope of rights in these trademarks, the ability to use the federal registration ® symbol, and the ability to record the registrations with the U.S. Customs and Border Patrol Service so as to block the importation of infringing or counterfeit foreign goods.
The TTAB determines only whether a mark can be registered with the federal government (and thus gain the additional legal benefits thereof) -- not whether it can be used. The mark owner may still have rights in the mark based on use, known as “common law” rights - and those use-based rights may continue to exist even if a federal registration is canceled.