Simon Tam of the Asian rock band, The Slants, probably was not envisioning an 8-year-long legal battle when he chose the group’s name. Slant is known as a racial slur for Asians. Tam hoped to strip the term of its derogatory purpose and “reclaim” it by choosing it as a name for his Asian-American band, with hopes of giving it a sense of empowerment. Tam’s attempt to trademark the name with the federal government failed. The U.S. Patent and Trademark Office (PTO) denied the application under the Lanham Act, 15 U.S.C. §1052(a), citing the registration as disparaging. The provision prohibits registration of those marks that “consist of…matter which may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”  Tam contested the Trademark Trial and Appeal Board’s (TTAB) decision and the dispute eventually reached the Federal Court.
Brexit, the United Kingdom’s (UK) decision to leave the European Union (EU), has made headline news in recent months. Brexit is already impacting trademark rights in Europe, including in the sports and entertainment industry.
New UK Filings Required. Trademark rights are conferred on a jurisdiction-by-jurisdiction basis. Going forward, brand owners will not be able to rely on a single EU trademark filing to cover the same geographic territory in Europe. In light of Brexit, brand owners now need to file trademark applications in the UK as well as the EU to protect their trademarks in the same geographic territory. For years, separate trademark filings in Norway and Switzerland (and other European countries falling outside the EU) have been required. Brexit adds the UK to the list of countries requiring separate trademark applications in Europe.
Back in the olden days of last year, there was no particular reason for entertainment industry players to be particularly interested in the actual administration of the Internet, unless they were just curious. Now, it benefits every brand owner to understand and pay attention to the basics of how new domain names come into being, who selects them and how they become public.
As anticipated, the Trademark Trial and Appeal Board ("TTAB") decision of June 2014 cancelling six trademark registrations for the Washington Redskins team was appealed by Pro Football, Inc. In August 2014, Pro Football, Inc. filed a lawsuit in federal court against the five Native Americans involved in pursuing the TTAB cancellation in an effort to try to overturn the TTAB's holding that the term “Redskins” is offensive to Native Americans and thus is not eligible for trademark registration under the federal Lanham Act. Section 2(a) of the Lanham Act prohibits protection for terms that “may disparage” or bring people into contempt or disrepute. 15 USC §1052; TMEP §1203. On July 8, 2015, the US District Court for the Eastern District of Virginia ruled against Pro Football, Inc., affirming the TTAB's ruling that the REDSKINS marks do disparage Native Americans and that such a decision is not unconstitutional.
In a 2-1 ruling last Wednesday, June 18, the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) resolved an opposition proceeding in favor of five Native American plaintiffs who sought to cancel six trademark registrations that contain the word REDSKINS and are owned by Pro Football, Inc., the owners of the National Football League’s Washington, D.C. team.
The Sports, Arts and Entertainment Group at Garvey Schubert Barer provides full service legal representation on sports, entertainment and business matters, including handling transactions related to brand management, licensing, joint ventures, venture capital, private equity, technology, the Internet and new media.