Does the government have the right to cancel a trademark?

As far as I can tell, the answer to that is no! NOTE: I’m not a lawyer, so what do I know? However, I did some research after a reader asked the question and, so far as I can tell, the government doesn’t have any right to dictate what name or logo a company uses. It can only refuse to offer trademark protection from the start.

In 1992, a group of Native Americans sued the Trademark Office for ever issuing the Redskins team trademark protection at all. Their case rested on historical evidence that the name was an ethnic slur at the time of the application. In 1999, the Trademark Trial and Appeals Board found in their favor, rescinding the team’s trademark protection based on evidence from dictionaries and other reference works, newspaper clippings, movie clips, scholarly articles, expert linguist testimony, and evidence of the historic opposition by Native American groups. The team appealed and won in federal court on a technicality that the Native Americans say they’ve fixed. The Trademark Board has just renewed their original decision and the team says it will appeal again.

I found an article at Harvard Law explaining trademark law @ https://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm. The purpose of trademarks appears to be to protect the rights of businesses to own and control their names and logos. The Redskins can use their name and logo with or without trademark protection, but without it, the courts will not protect them from other people selling Redskins knock-offs.

I think you’ve got a conundrum right there. If a name and/or logo actually is offensive, then why would anyone WANT to use it for their business or their knock-offs? Unless maybe a whole lot of folks don’t agree or else don’t care. The problem for those who are denied trademark protection is that anything they spend on advertising or research and development can be hijacked by copy cats. The Redskins make big bucks off their souvenir products; they don’t want anyone else legally cutting into their profits.

The Harvard law article doesn’t discuss grounds for denial of a trademark application, but Section 6, “Can trademark rights be lost?”, lists only three causes for a business losing a trademark that has been accepted.

  • Abandonment: The trademark owner stopped using it, perhaps because the business folded.
  • Improper licensing or assignment: The business passed on rights to use its trademark in ways that violate trademark requirements.
  • Genericity: The trademark has become so identified with the generic product – e.g., “aspirin” – that the original owner can no longer deny other products of that same type from using it.

The intent in all three cases appears to be freeing up a trademark that has lost its trademarkiness so other people can use it. The first two would only happen if the owner of the trademark stopped caring or screwed up. The third would only happen if the owner sued and the court found in favor of the defendant on the grounds of genericity.

In the case of a trademark acquiring a “disparaging” meaning as a result of changes in the culture, I believe it would be up to the owner to decide to abandon the trademark, not up to the government to snatch it away.

Keep in mind that I only read a couple articles on-line. I could have all or part of this wrong. What I don’t think I have wrong is that the Senate Majority Leader should not be spending time on an issue that is working its way through the courts … unless maybe he’d already finished all the work he’s actually getting paid to do, like passing a federal budget or bringing House-passed legislation to the Senate floor for discussion and vote.

Source:
http://thinkprogress.org/sports/2014/06/18/3450333/in-landmark-decision-us-patent-office-cancels-trademark-for-redskins-football-team/

5 Comments

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5 responses to “Does the government have the right to cancel a trademark?

  1. Ting

    Thank you, Chrissy. That is all very interesting. I am very worried about basic property rights these days. It has gotten to the point that I am scared that everything that we have worked and saved to accumulate the last 40 years might be confiscated in some kind of way. Things like this keep me awake at night sometimes.

    The part about losing a trademark when it becomes generic, like “aspirin” is also very interesting. I wonder if that would apply to Coke, or Round-up. I always used to say that I liked to invest in a company whose product name became a catch-all for everything in the category. Now….maybe not.

    And you are absolutely right about that vile, vile Senate majority leader. He sticks his nose everywhere it does not belong, and nowhere near where it does belong.

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    • chrissythehyphenated

      Thanks, Ting!

      “When an issue is subjective, it would be wise for the government not to take a stand and let private persuasion and market pressure sort it out.

      “Ah, but there’s the rub, isn’t it? This ruling happened precisely because the campaign against the Redskins has failed in the court of public opinion. The issue has become the hobby horse of a small group of lefty commentators and politicians in DC, while regular Washingtonians, the people who make up the team’s base of fans and customers, are largely indifferent. So the left resorted to one of its favorite fallbacks. If the people can’t be persuaded, use the bureaucracy—in this case, two political appointees on the Trademark Trial and Appeal Board.”

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      • chrissythehyphenated

        Same thing they did to shove abortion and are doing to shove gay marriage down the throats of Americans who never wanted either.

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  2. Ting

    I don’t read the Federalist on a regular basis, but I have gotten a lot out of the things that I have read there. Wish there were more hours in a day!

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