sycasey;842326493 said:
This is the result of a suit brought by a private party, the ruling in which merely creates additional incentive for them to change the name.
I'm not even sure it creates much additional incentive to stop using the name. Certainly this may tend to signal that social and political attitudes have shifted, and those can have an impact on a company's bottom line (not to mention jury verdicts), but from a purely trademark perspective I think the impact is probably minimal or at least highly variable by region. IMO, the main benefits to federal registration are constructive nationwide use and incontestibily, but those are of little use to the team at this point.
Constructive use is beneficial mainly to young or regional businesses so they can minimize the risk of priority disputes with other smaller businesses from different regions down the road as they expand. Regardless which side of the race debate you fall on, REDSKINS is recognized across the US as the name of the football team from Washington DC, probably universally our very close to it. At the very least, there is no credible competition from another football team using that name in the US, particularly at the for profit level. (High schools regularly appropriate pro and college trademarks, wholesale and as derivatives, and nobody really makes a big deal out of it or challenges the implied assertion that it's fair use, because it almost certainly is.) So IMO they don't really need constructive nationwide use anymore because they've got actual nationwide (and probably worldwide) use, which always trumps anyways.
Incontestibility is the real long term benefit, but as they just learned it is a misnomer. All incontestibility does is eliminate some of the bases for cancellation, not all of them. For example, it does not eliminate cancellations based on allegations that the mark was not properly registrable at the time it was registered, such as immoral or scandalous matter. So whatever incontestibility they (or any other mark for that matter) ever had or thought they had was always illusory, at least to a certain degree.
But infringement lawsuits are never heard by the TTAB, and are always case by case unless, I suppose, somehow a group of alleged infringers qualified for class status. At its core trademark law is rooted in state laws, typically those governing unfair competition. Trademarks also can typically be registered at the state level (not sure about all states, but in CA you definitely can). So infringement lawsuits can be and often are filed and heard in state courts. Of course, they also can be and often are filed and heard in federal district courts, but those cases are based on diversity, not subject matter jx. (The PTO registers trademarks under Commerce Clause authority, a prerequisite is interstate commerce.)
So from an infringement defense standpoint, which let's face it is by far the #1 reason people own trademarks, it's very unclear if anything has materially changed. You'd really need to know the law and attitudes of at least all 50 states, which I don't.
