Yesterday’s decision by the U.S. Patent & Trademark Office to cancel the Washington Redskins trademark was THE talk throughout the nation—-you didn’t have to be a football fan in order to hear the rippling reaction from sports newscasters to the women on “The View”. As you know, the Redskins have been under immense pressure from Native American groups and others to change their name because the name is used as a derogatory term to describe Native Americans. The Redskins pushed back—and from a business perspective I cannot blame them because they have had the name for a very long time and it would cost to change the name and re-brand. However, let me clear up a few a few questions about this decision from a purely LEGAL perspective. (NOTE: My Firm handles copyrights and trademarks and NOT patents.)
- 1. Who made the decision to cancel the Redskins trademark? A: The U.S. Patent & Trademark Office (“USPTO”) which handles 2 out of the 3 areas of intellectual property: (1) Patents (inventions), (2) Trademarks (symbols related to branding which can be intangible symbols) and (3) Copyrights (original written works). This agency is based in Virginia and has been criticized from taking a remarkably long time to process patent and trademark applications and petitions, some as long as several years.
- Why did they make that decision? In 1999, a Native American group petitioned the USPTO saying that the Redskins trademark was “disparaging” towards Native Americans and those of Native American descent. In 2012 according to U.S. Census data, Native Americans and Alaska Natives made up about 2% of the U.S. population of over 300 million.
- So what does the decision mean LEGALLY for the team? It means that ANYONE, ANYWHERE in the U.S. can technically open up a bar, restaurant, consulting firm, etc. using the “Redskins” name and logo (Hey—remember to call me BEFORE you do this; I can read your minds.) The purpose of having trademark protection is so that NO ONE can use your name and symbols related to that brand that are registered with the USPTO. Since that protection is gone, it’s free reign for anyone. NOTE, however, that there is an appeal by the Redskins so not so fast—-they could ask for an injunction against you until their appeal is decided.
- What does this mean from a BUSINESS prospective for the team? It means tough decisions. The Redskins have appealed to the District Courts—which usually defer to federal agencies since they are the ones that REALLY know what they are doing so that’s bad news for the Redskins. Since the Redskins no longer have the exclusive right to the Redskins brand, naturally they would want to re-brand and register under a different name and symbols so they can have exclusive right to use—–otherwise it would be hard for the Redskins and NFL to make money. This is not simply a legal decision but a business one as well. The Redskins do not HAVE to re-brand but from a business perspective, they won’t make money if they don’t.
- How does this relate to YOU as a business owner or stakeholder? The lesson to be learned is to (1) hire a great BUSINESS attorney (I underline that point not for selfish reasons but because more than likely it was a trademark attorney that filed this petition who was only looking at the legal side, not business side, of the application) and (2) Have an open mind. There are strict tests that the USPTO uses to determine is someone will be awarded a patent or a trademark. But look outside the confines of what are the written rules to how your brand will be or could be perceived by the American public. If you want to name your Chinese restaurant “Cats & Dogs”, you may be well pass the USPTO tests but they have discretion in rejecting brands that are disparaging.
Attorney Dar’shun Kendrick is the owner of Kendrick Law Practice, LLC, a boutique business law firm in Decatur, GA focused on keeping growing Georgia business owners “IN business and OUT of Court” through a variety of customized business and legal services. She has an M.B.A. as well as serves in the Georgia House of Representatives.