Originally posted 2015-02-16 17:37:02. Republished by Blog Post Promoter
For years I’ve been complaining that so much of the excitement in intellectual property law jurisprudence these days involves policy-making by judges and the PTO.
- How and what is secondary liability for trademark infringement, and what isn’t?
- Are defendants entitled to attorneys’ fees when they win a copyright infringement case?
- How much ethnic identity is too much for a trademark to be used in an ethnically offensive manner?
- How much, really, should the PTO’s determinations in a trademark registration proceeding preclude its substantive rights in other contexts?
Funny thing! So, as it happens, I was recently quoted in an article in the World Intellectual Property Review on the topic of our old favorite, the Redskins trademark case. And it went like this:
Few intellectual property lawyers in the US (and elsewhere) will need reminding that professional American football team the Washington Redskins was stripped of six trademarks last year after a decision by the US Patent and Trademark Office’s Trademark Trial and Appeal Board.
The term ‘Redskin’—a slang word for a Native American and variations of which were used in all six trademarks—was deemed offensive.
In response to the ruling, the team filed a lawsuit against the Native Americans who initiated the challenge, in an attempt to keep its trademarks. The Native Americans, unable to dismiss the suit, will face off with the club at the US District Court for the Eastern District of Virginia this year.
Ron Coleman, partner at US law firm Goetz Fitzpatrick, says: “The drafters of the Lanham Act [the US’s federal trademark statute] never considered whether a registration could be revoked retroactively upon a finding that, when applied for, the trademark was not eligible for registration because late-coming petitioners succeeded in proving that it was derogatory of an ethnic group.”
Yes, I said that. Now, a few things, both of which were pointed out by me in a post I wrote around the same time I was contacted by that reporter. Well, first, one thing that was pointed out by John Welch: the writer’s statement that “the Washington Redskins was stripped of six trademarks last year ” is inaccurate: The Redskins were stripped of registrations, not trademarks. They can still, and will still, sue your pants off for pretty much everything trademarky they could sue your pants off for before.
Secondly, yes, Congress never considered that stuff I said. The whole of my argument, per my blog post, is this — indulge me here; there’s more to come:
While the goal of avoiding offense by government actions such as trademark registration is laudable, achieving that goal seems more than ever to embroil agencies and judges in deciding highly-politicized and sensitive issues that are arguably not appropriately determined by either. Adding “time travel” to their task only makes it more onerous. . . .
[T]he policy question of whether a registration should be revoked retroactively, after decades of use by the registrant following allowance and evidently with no time limit — as long as the evidence is found to support a contemporaneous finding of disparaging meaning — is probably one that Congress should address. Its application in this case, regardless of the merits under the standards applied by the TTAB, is certainly troubling.