By now, much has been made of the Trademark Trial and Appeal Board’s holding that certain trademarks featuring the name “Redskins” should be cancelled because they were disparaging to Native Americans. Rather than review the merits of the decision, I’d like to describe the process that lead to the Appeal Board hearing the matter.
First, to obtain trademark protection, a registrant submits an application to the United States Patent and Trademark Office that, among other things, describes the trademark, describes the good or service to which the mark relates and provides that date by which the mark was used in commerce. This application is examined by an Examining Attorney who ensures that the application complies with the statutory requirements. Among the statutory requirements are that the proposed mark not be generic, that it not be confusingly similar to another mark in the same class, and, relevant to the Redskins litigation, that it not consist of “matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols.” The Examining Attorney will sometimes hold that a proposed application fails these statutory requirements (usually on the basis that the mark is generic or confusingly similar to another mark) and deny registration.
The Examining Attorney’s review process is not an adversarial process, and, as a result, many trademarks that may not be entitled to registration pass review. To compensate for this, proposed trademarks are published in the Official Gazette, and interested parties can oppose the application for a period of up to 90 days days. Once the opposition period has elapsed, though, an interested party can bring a petition to cancel the registration. Generally, this petition for cancellation has to occur within five years of the date of registration, but where the registration was obtained contrary to the requirement that the trademark not disparage any group of persons, the petition may be brought at any time. During the cancellation proceedings, the petitioner must show that the trademark was disparaging at the time it was registered.
Although many have criticized the USPTO for allegedly overstepping its boundaries by holding the Redskins trademarks should be cancelled, the process used complied with statutes passed by Congress. Furthermore, this is not the first time the USPTO has cancelled disparaging trademarks (for a list of some disparaging trademarks that have been cancelled, see this article from Above the Law, and the USPTO previously held that the name Redskins was disparaging, only to have the holding mooted based upon the doctrine of laches). Furthermore, several websites have come up with lists of registered trademarks that are allegedly more disparaging than “Redskins” yet still enjoy trademark protections. These trademarks however, have not been subject to a cancellation proceeding. If an interested party took the time and expense to petition the USPTO for cancellation, most, if not all, of these trademarks would be cancelled.
The lesson for any small business from this litigation is that (1) disparaging trademarks are not entitled to registration, and (2) even if you manage to obtain trademark registration of a potentially disparaging trademark, your trademark will still be subject to a petition for cancellation at any time on the basis of disparagement.