the ruling to the U.S. Court of Appeals
for the Fourth Circuit. And a related case
involving the TTAB’s rejection of the
registration of the name “The Slants”
for a rock band is pending before the
U.S. Court of Appeals for the Federal
Circuit, which has agreed to hear arguments en banc.
The Federal Circuit judges will
decide whether the government has a
constitutional right to make content-based decisions about the offensiveness
of a trademark. The Redskins franchise
has filed an amicus brief in that case,
arguing that Section 2(a) of the Lanham
Act, which allows such rejections, violates freedom of speech. If there is a circuit split, the case could end up before
the U.S. Supreme Court.
“We’re far from the end zone,” Sommers quipped.
Even if the D.C. football franchise
ultimately were to lose, however, the
team’s ability to use the Redskins name
would not be affected.
“To be clear, the court’s judgment
is not an order that precludes PFI from
using the marks in commerce,” Lee
wrote. “What actions, if any, PFI takes
going forward with the marks are a
business judgment beyond the purview
of this court’s jurisdiction.”
In fact, the Redskins brand is so
well established, some lawyers say the
commercial impact of the ruling will be
“The ruling merely means the team
no longer benefits from a legal presump-
tion of ownership,” says Sommers. “But
the Redskins franchise is unlikely to
have trouble proving its rights to the
brand under common law.”
In general, a federal trademark is
preferred because the federal stamp
presumes ownership, a requirement
for proving trademark infringement.
Under common law, a company must
prove its rights to a brand.
But the test for infringement is the
same under common law and federal
trademark law: A company must prove
that the offending mark is confusingly
similar, or likely to cause confusion, mis-
take or deception among consumers.
“If someone sells an unauthorized
T-shirt with the same color scheme
and logo as the official Redskins merchandise, it’s going to be fairly easy
even without a federal trademark for
the franchise to prove its rights to the
brand,” says Finnegan’s Sommers.
In theory, licensing agreements,
which contribute millions in profits to
a sports franchise, could be affected if
licensees try to use the lack of federal
trademark guarantee when negotiating fees, lawyers say. But even here, the
Redskins are unlikely to take a hit.
“NFL merchandising royalty rates
are pretty much set in stone,” says Sommers. “I don’t anticipate much of a commercial impact on the team.”
The Redskins brand is so well-established that lawyers say the
commercial impact of the ruling WILL BE NEGLIGIBLE.
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