ASKED & ANSWERED: Michael Spink on USPTO's ruling on Washington Redskin's trademark

By Jo Mathis

Legal News

The recent decision by the United States Patent and Trademark Office to rescind federal trademark protection for the Washington Redskins recently caused a national stir as the USPTO said the name is "disparaging to Native Americans." Attorney Michael Spink of the Ann Arbor office of Brinks, Gilson, & Lione talked to the Legal News. Spink's intellectual property law practice focuses on all aspects of client counseling, including procurement, licensing and opinions on patents, trademarks and copyrights.

Mathis: The office enforces the Lanham Act, which restricts granting trademarks that are deemed disparaging. Considering all the controversy surrounding use of Native American team names over the years, shouldn't the Redskins have anticipated this?

Spink: The USPTO only determines issues of trademark registration, not the right to use a trademark. A key distinction to make in this case is that the USPTO cancelled the trademark registrations, but did not rule on their right to use the trademarks in commerce.

Mathis: Some say this is a case of the government overstepping its reach. Do you agree?

Spink: The USPTO did not act unilaterally. Five Native Americans filed a Petition for Cancellation, and the Trademark Trial and Appeal Board (TTAB) at the USPTO merely heard the evidence and ruled on the issues presented.

Mathis: This move doesn't force the team's owner to give up the name, but stops him from using it to make money on merchandising. Isn't the unintended consequence that even more people possible to make money from the Redskins name?

Spink: As noted above, while the trademark registrations were cancelled, the owners can continue using and profiting from the trademarks, and likely stop others from using the trademarks.

Mathis: Do you see an increase in counterfeit products? Who will that hurt?

Spink: While there are several benefits of federal trademark registration, the owners will continue to have rights to the trademarks based on their common law use. Therefore, I don't anticipate an increase in counterfeit products. There is the possibility of products that criticize the continued use of the trademarks, especially now that the TTAB has cancelled the registrations as being disparaging.

Mathis: How long do you expect an appeal to take? And what do you think will happen in the meantime?

Spink: An appeal of the TTAB decision can take 1-2 years, depending on where it is appealed.

Mathis: Are you surprised by all the attention this case is getting?

Spink: I am not surprised since the use of American Indian names for sports teams has always garnered attention.

Mathis: In The Washington Post, George Washington University Professor Jonathan Turley wrote that the Redskins case is an example of a federal agency "going beyond its brief to inappropriately insert itself in social or political debates." He said that what is needed is a new law returning these agencies to their core regulatory responsibilities and requiring speech neutrality in enforcement. Do you agree?

Spink: I disagree. The Trademark Act (The Lanham Act) was enacted by Congress, and requires that the USPTO hear cases brought by persons who claim to be injured by a trademark registration that "may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols , or bring them into contempt or disrepute."

Congress, by enacting a law that requires determination of what is "disparaging," forces the USPTO to review social and political customs and issues. The USPTO reviewed a very large amount of evidence, including dictionary definitions, media writings, expert reports and information from the National Congress of American Indians (NCAI), in order to ascertain whether REDSKINS, at the time of registration, was disparaging to a substantial composite of an identifiable social group. This determination is necessarily a difficult one that involves social and political issues.

Mathis: Anything else you'd like to say about this issue?

Spink: A noteworthy point is that the issue presented was whether the trademarks were disparaging at the time of registration, which was generally the 1960s. The evidence included dictionary definitions and writings from that time period. The decision offers an interesting glimpse into how the word redskin was understood 50 years ago, and reminds us that the meanings of word can change over time.

Published: Thu, Jul 03, 2014

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