Christine Brennan is one of the best sports columnists in the country. And she is a lovely person. Here’s her column on the decision by a federal judge in Virginia to cancel the federal registration of the trademarks of the NFL’s Washington D.C. franchise. The court found that the term in question were disparaging to a substantial composite of Native Americans. Under the federal Lanham Act, that finding compels cancellation.
The question is, what does that mean? It may be easier to talk about what it does not mean. As the court’s opinion notes, it is not an order that precludes the team and owner Daniel Snyder from continuing to use the name. And it doesn’t mean that the team can’t enforce the trademark. Bootleggers are not free to set up shop pedaling t-shirts bearing the logo. The team still has common law rights to the trademark which it can enforce. The primary consequences are these:
- Federal registration provides nationwide notice of the existence of the trademark. So that goes away. But the team’s interest by this point is known nationwide.
- Federal registration makes the mark “incontestable” in litigation. So a party challenging a federal registered mark for example, can’t argue that the mark is confusingly similar to another mark, that the mark is “functional” or lacks secondary meaning. This means the team would have to fight those fights in court if someone challenges the team’s rights in the mark. But again, given their long use, it seems unlikely that a subsequent or other user would be successful with these claims.
- Federal registration gives the mark holder the automatic right to sue in federal court. So that’s gone. But the team could still sue in federal court based on diversity of citizenship.
- Federal registration allows the holder to recover three times actual damages plus attorney fees in a successful infringement suit. So that’s gone.
- Federal registration allows the mark holder use the ® symbol, which prevents claims of innocent infringement. Again, this is not likely an issue for the team given their public and long term use.
- Federal registration entitled the mark holder to enlist help from US Customs for policing counterfeit goods. This loss may be the team’s biggest problem to the extent counterfeiters import bogus product.
The court’s decision may do more damage to Snyder and his franchise from an optics perspective than it does from a true legal perspective. But at some point, you have to wonder, when is this fight just not worth it? It seems to me we passed that point a long time ago.
Many thanks to my colleague Amanda Penick for her help on this post!