As a lifelong New York Giants fan, I wish it were true that that the Washington Redskins had “lost their trademark” as several sports commentators -- who should know better -- have publically stated. In addition to being mortal enemies to my beloved Giants, another perfectly legitimate reason to loathe the team from Washington is because of their refusal to change their derogatory team name. Frankly, I think the owner of the team should be ashamed of himself. That said, the decision issued by the Trademark Trial and Appeal Board (“TTAB”) which cancelled certain of the team’s federal trademark registrations does NOT prevent the team from: (1) using REDSKINS as the team name or (2) enforcing the team’s common law trademark rights against would-be infringers. This is because a federal registration is not the only method by which a brand name and/or logo can acquire rights and protections by law.
So what’s the difference between a federally registered trademark (which an owner registers with the United States Patent and Trademark Office (“USPTO”)) and a common law trademark (which arises simply by an owner’s use of a mark in commerce)? There are significant benefits to a federal trademark registration, including:
· exclusive, national scope and protection to the mark (regardless of the actual geographic use)
· notice and the legal presumption of ownership
· The right to sue for infringement in federal courts; and
· The ability to recover profits, damages and costs for infringement, including the possibility of receiving treble damages in certain circumstances;
· The ability to recover attorneys fees in infringement actions;
· aiding in obtaining foreign registrations
· the ability to record with US Customs to prevent importation of counterfeit goods
“Common law” rights, on the other hand, are developed through use. These rights are governed by state law rather than statute. Common law trademark rights are technically limited to the geographic area in which the mark is used. Thus, if a coffee blend is sold under the name BLASTER in California only, the trademark rights to that name exist only in California. If another coffee retailer begins to market a different blend in New York under the same name (assuming they had no knowledge of the California company), then there would be no trademark infringement. However, if the New York company attempted to sell their coffee blend nation-wide, they would discover that the California company's common law rights to the mark would prevent them from entering the California market. In the internet age, query whether this old-fashion notion of separate markets is still applicable. The REDSKINS, for instance, have been using that name in commerce since at least 1932. The mark has generated billions of dollars in sales worldwide. Their trademark rights are pretty darn strong.
This case is interesting because it proves that brand owners that have built goodwill in their marks over time are still entitled to certain protections by law -- even without a federally registered trademark. It is crucial that any new business venture conducts a comprehensive search of not only the USPTO but also each state’s trademark databases and online sources, such as Google. B+I subscribes to a proprietary database that allows us to perform deep searches that the average consumer cannot otherwise perform. Please don’t hesitate to contact us if you would like a comprehensive search conducted. We conduct the search, provide you with a written opinion letter, and follow up the letter with a conversation to discuss the results and how best to proceed. Don’t take shortcuts when it comes to the trademark process.