Could Offensive Trademarks Find Refuge In Common Law?

The 177-page tome the Trademark Trial and Appeal Board (TTAB) just issued in Blackhorse v. Pro-Football Inc. is remarkable for its length and its subject matter, cancellation of the controversial REDSKINS mark as disparaging to Native Americans, though this isn't the first time the TTAB has crossed that controversial threshold.

The decision underscores a little known fundamental of U.S. trademark law: Rights primarily are based on use of a mark, not registration. You don't need a registration to enforce rights in a mark. The decision doesn't mean that Pro-Football, which owns and operates the Washington Redskins NFL team, is required to change the team name or that it can no longer prevent others from making commercial use of the name.

The TTAB makes this distinction clear at the beginning of the decision: "This 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 its benefits, such as nationwide constructive notice of rights, and prima facie and ultimately, in many cases, conclusive evidence of exclusive rights to use the mark for the identified goods or services. Registration also allows the owner to record with U.S. Customs and Border Protection to garner that agency's assistance in seizing and potentially destroying counterfeits (obviously a big issue for the NFL). But even if a registration is cancelled, the underlying common law rights continue in the geography where the mark is used and known.

To determine whether an owner has common law rights in a mark, courts not only require actual and continuous use of the mark, but also look to factors such as widespread distribution and the public's association with the mark. An owner of common law rights can still sue for infringement in state or federal court and obtain both injunctive relief and monetary damages in appropriate cases. Without federal registration, an owner still has other avenues, albeit slightly more limited and definitely more costly, to enforce its rights in a mark.

While disparagement is a bar to federal registration of a mark (the TTAB may cancel a trademark registration that "may disparage... persons, living or dead... or bring them into contempt or disrepute"), the key underlying question here is whether disparagement is a valid basis under the common law for invalidating trademark rights. If so, Pro-Football may...