Bootleggers hoping to set up shop and sell Washington Redskins apparel with impunity now that the U.S. Patent and Trademark Office has granted a petition to cancel six of the NFL team’s trademark registrations should think twice. Even if the decision survives appeals, the team will own its name and logo and be able to claim infringement in federal court. And since it has been using the contested marks for decades in a high-profile business, the franchise would have little trouble establishing its intellectual property.
Unlike patents, trademarks exist before and without registration. In fact, to register a mark, an owner has to show that it’s already being used in commerce. And an unregistered mark can be as valid as any other. “If the registration is gone, the mark is still there,” says Jane Shay Wald, a partner emeritus at Irell & Manella in Los Angeles, where she practiced intellectual property law for 38 years. “You don’t need a registration to sue somebody for infringement. You don’t need a registration for your licensing. You don’t need a registration to get an injunction. And if you do successfully sue for infringement, the remedies are identical for registered and unregistered marks.”
The basic point of registration is to let competitors know of your presence. Before naming a product or service, companies search the U.S. PTO database to see what’s taken and what’s available. If, say, a barbecue sauce maker sees a rival sauce using “Lucky’s” on the label, it will think of something else and save both companies future headaches. It’s the first, but not the only, step in protecting against infringement claims. In her trademark work with clients, Wald said she would also conduct a “common law search.” This means getting a report that gleans existing uses from Google, business listings, and other sources. These cost about $700 and can run to 500 pages.
Registration is also a quick way to establish a claim to a mark if it is infringed. “For a company that’s doing very little business,” says Wald, “the procedural advantage is very large, because then you do have this presumption of validity.” The Redskins, however, can just as easily point to plenty of transactions using their existing marks. Without registration, the team would lose some extra protections against counterfeiters—the ability to have merchandise seized and claim extra damages—but they could still take the counterfeiters to court.
The real problem for the team would be a district court deciding, independent of yesterday’s decision, that its trademarks are indefensibly offensive. For example, says Wald, people occasionally try to register marks that include the n-word: “I can’t imagine a court saying that’s a valid trademark. I think under those circumstances a court would say, ‘This is not equitable, and you should not have a property interest in this mark.’” A court might someday have the same opinion of Redskins, but so far none has.