SBJ/June 23-29, 2014/Franchises

NFL still standing with franchise on name

The launch of a club called Redskins Salute arrives at an awkward moment for Washington’s NFL team, just days after a U.S. regulatory tribunal did anything but salute the club’s name, declaring instead the team moniker a slur and removing federal trademark protections.

The team brushed off last week’s ruling, noting the same agency in 1999 ruled similarly and that the decision was overturned four years later on appeal. And while the team could tie the case up for years on appeal, many asked in response to the decision whether the league, which is so protective of its image, might move to force a team name change.

“If I am the league, and I lose this battle on the registration, I am really exposed,” said Barry Werbin, a Herrick Feinstein partner who focuses on intellectual property. That exposure would come if the team would have to cite common law to protect its trademark, and, Werbin said, “No one knows where this would come out in common law.”

“Common law” means the law as handed down by courts over many years and not necessarily codified by federal authority. So, because the Redskins have used their name for eight decades, even if they lack federal protection, they could cite common law in an effort to stop counterfeiters.

How a state court might rule on the matter is unclear given the U.S. Patent and Trademark Office’s ruling of the team name as a slur. That uncertainty, in turn, could leave the NFL with a team unprotected from counterfeiters. Because most merchandise and licensing revenue is shared equally among the clubs, that’s something that would hurt all NFL teams, not just the Redskins.

The league has shown no indication of changing its stance that the name is not a slur and that any decision on the moniker resides with the club. The NFL deferred all comment to the team, and indications were the league still strongly sided with keeping one of its top brand names.

Nevertheless, the ruling comes at a time when there’s also growing political pressure on the subject, along with the recent firestorm involving Los Angeles Clippers owner Donald Sterling.

“This is also of course a big political issue, with the NFL having been pressured last month in a letter signed by some 49 senators to force the team to change its name,” Werbin said. “Considering what happened with Sterling’s racial remarks and the NBA forcing a sale of the Clippers, we probably are moving more and more to zero tolerance within the leagues respecting race and disparagement.”

Another trademark lawyer downplayed the tribunal’s ruling, saying many in his profession don’t lend much credence to the body.

“There is very little deference given to the Trademark appeals board,” said Greg Gulia, head of the trademark practice at Duane Morris. On issues like plaintiff standing and rules of evidence, Gulia predicted, a federal court will likely be far more strict than the tribunal.

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