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.

Is what I said.  So now, I wonder, what should I say about this revolting development?:

Dem bill would strip Redskins of trademark
Rep. Mike Honda (D-Calif.) has introduced legislation to force the Washington Redskins football team to change its name.

Honda’s bill would prohibit the U.S. Patent and Trademark Office from issuing new trademarks using the term “redskins” as a reference to Native Americans, as well as retroactively eliminate existing trademarks.

Honda said his measure would prevent implicit government acceptance of a term that many Native Americans find offensive.

If you’ve read this far, you know the first answer to the “what would I say?” question:  By the article’s own terms in describing the proposed law — as “prohibit[ing] the U.S. Patent and Trademark Office from issuing new trademarks” the bill in question would do none of the things the author seems to think it would do because …  of course …

The USPTO does not issue trademarks, it registers them.

(And this is why, once again, class, it matters when people who should know better refer to “trademarking” when they mean registering a trademark.)

So, let’s get this straight.  First of all, there have been a number of bills attempting to address this issue.  But this is the Mike Honda one, and, as you can see, it provides solely for the cancellation of REDSKINS marks and the prohibition of future registration of them.  It would not in any way affect trademark rights — other, that is to say, than trademark rights which are themselves affected by registration.  It would not force the Washington Redskins football team to change its name.

Well now, what do we have to say?  Here, now, is Congress taking a stand (actually, mostly not taking a stand — Govtrack.com gives this bill a 2% chance of being enacted) on one these here policy issues!  Isn’t that what it’s supposed to do?

I have to say, actually, yes.  It would throw a lot of things into relief if it did.

Let’s discuss them.

First, what about this “registrations versus rights” business?  Why didn’t Honda actually do what the legally illiterate reporter for The Hill said he was proposing to do:  Outlaw the actual trademarks?  There would be lots of ways to do that without actually impinging directly on free speech, wouldn’t there?  Couldn’t you deprive the federal courts of jurisdiction over trademark or unfair competition related claims based on purported REDSKINS trademarks?  There are even more subtle tricks you could play to at least hamstring the NFL’s ability to enforce even common law rights in the accursed name in a federal court.

Why do you suppose Congressman Honda didn’t propose that, given that it couldn’t have made his bill any less likely to pass than the one he did propose?  I discuss my speculation about this in part two of this essay, posted here.

Originally posted 2015-02-16 17:37:02. Republished by Blog Post Promoter