In a 170-page ruling, the Trademark Office recently canceled the registration of the National Football League’s team, REDSKINS mark as disparaging to Native Americans.
The ruling should help educate the public that trademark rights are primarily based on use of a trademark, not on registration of a trademark. For that reason, you do not need a registration to enforce rights in a trademark, but you must use the mark. The decision does not mean that the team is required to change its name. Nor does it mean the NFL is unable to prevent others from making commercial use of the name.
The Trademark Office made this distinction clear at the outset, stating, “[t]his decision concerns only the statutory right to registration under Section 2(a). We lack statutory authority to issue rulings concerning the right to use trademarks.”
Owning a federal trademark registration has several benefits: nationwide constructive notice of rights; prima facie conclusive evidence of exclusive rights to use the mark for the identified goods or services; and the backing of the U.S. Customs and Border Protection minimize importation of counterfeit goods. However, if a registration is cancelled, common law trademark rights can be relied upon in the territories the trademark was actually used.
To determine whether an owner has common law rights in a trademark, courts not only require continuous use of the trademark, but also consider how widespread the distribution is and the extent of the public’s association with the trademark. An owner of common law rights – even one lacking a federal registration — can still sue for infringement in state or federal court and obtain both injunctive relief and monetary damages in appropriate cases.
David M. Lilenfeld