In July’s Pro Football v. Blackhorse decision, the United States District Court for the Eastern District of Virginia affirmed the Trademark Trial and Appeal Board’s (TTAB) decision to cancel several trademark registrations owned by the Washington Redskins. The longstanding battle saw litigants present evidence and argue over whether “Redskins” was a disparaging, derogatory term. Both Courts have now concluded that the word “Redskins” does indeed constitute “immoral, deceptive, or scandalous matter” in violation of United States Trademark Law.

What may surprise many is that cancellation of its trademark registrations does not mean the professional football team must cease use of “Redskins.” In fact, the team is free to continue using the name as it sees fit, although it can no longer enjoy the benefits of a federal trademark registration.

Trademark rights are earned through use of a trademark, not through registration. A federal trademark registration cannot be obtained unless the mark is used in interstate commerce, i.e. displayed or advertised in connection with a good or service. However, the benefits of a trademark registration are many. A trademark registration memorializes the mark by providing nationwide notice of ownership and exclusivity of use. Registration also secures the owner a rebuttable presumption that the trademark is valid and enforceable against third party infringers. These benefits are substantial when it comes time to enforce your trademark against others.

So while you cannot expect the Redskins to change their name any time soon, you can expect the club to suffer the consequences of not having a federally registered trademark. This means enforcement of the team’s trademark will become more difficult, and will require the expenditure substantial time and money to prove exclusive rights to the name.

The lesson learned here is simple – select an appropriate, non-disparaging trademark and seek a federal registration by contacting a Board Certified Intellectual Property Attorney. The cost to obtain a trademark registration soon after adoption is much less than the cost to enforce an un-registered mark.

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