The National Football League team, the
Washington Redskins lost a fight of Super Bowl proportions today before the
U.S. Patent and Trademark Office. The team’s
host of registered trademarks dating back to the 60’s were cancelled on the
ground that they were disparaging on the date they were registered and as such,
should never have been registered.
The ruling does not prevent the team from
using the trademarks but means the team loses the benefits of a registered
trademark including the ability to sue for trademark infringement. Not
surprisingly, the team’s lawyers have already indicated that the decision will
be appealed.
In Canada, the Washington Redskins
trademark has been registered since 1980. Under the Canadian Trade-marks Act, a trademark which is
“scandalous, obscene or immoral” at the date of registration may be held
invalid. So the obvious question
remains, would a disparaging trademark in the US be considered “scandalous,
obscene or Immoral” in Canada? If challenged in Canada, would we be less,
equally or more offended than our neighbours to the south?
Unlike in the US, if a mark in Canada is
held “scandalous, obscene or immoral” it cannot be used in the country. The Trade-marks Act specifically indicates
that such offensive marks cannot be ‘adopted’ which would thus prevent their
use. This raises an interesting question if the U.S. Patent and Trademark
Office decision is overturned on appeal but the same fight is engaged in Canada
with the Canadian court’s ruling against the team. Would the NFL not televise
games or sell merchandise in Canada? Perhaps those opposed to the Washington
Redskins should think about using Canada to advance their fight.
In all, the appeal(s) in the US will likely
dictate the fate of the Washington Redskin trademarks in Canada. However, there
is a lesson in this not just for sports franchisees but for all trademark
owners – choose your trademark’s carefully because your decisions might come
back to haunt you years later.
By Scott Miller
By Scott Miller