It’s not politically correct to call a Native American a “redskin.” We all know that. However, a bill currently before the House of Representatives would divest Washington D.C.’s football team of their registered and famous trademark. This brings a fight that is currently before the USPTO into the legislative arena. Changing its name could cost the team, which credibly claims it does not intend to offend anyone, $millions in re-branding and merchandising.
The Washington Redskins were originally called the Boston Braves. The team was renamed the “Redskins” on July 8, 1933,, one year after the team formed. Back then, politically correct terminology for minorities was simply not a consideration. At that time, they played at Fenway Park, keeping the park occupied outside of baseball season. The team moved from Boston to their present home in Washington, D.C. in 1938, the year the Washington Redskins were chartered into the NFL.
Since that time, the Redskins have been a top NFL team, their performance doing honor to the great tribes of Native Americans to whom their name refers.
The REDSKINS mark has been used in commerce since 1932; it was re-registered in 1967. An argument that the mark is not “famous” under the Lanham Act’s definition of famous marks would undoubtedly fail.
While I would never call a Native American a “redskin,” just like I would never use a racially derogatory term toward any race, I completely disagree that Congress should be involved in renaming a private enterprise (which the NFL and all of the teams in it are). The Trademark Trial and Appeal Board (TTAB) is reviewing the mark to determine whether it has become so offensive that it no longer qualifies as a mark; Congress should sit this one out and let the TTAB do its job.
THIS is why a trademark search is important BEFORE you invest $millions into branding your product. If you intend to market internationally, get the trademark search done in every country that you intend to market in. And search to register in the correct category or categories….
iPhone can’t be iPhone in China. There’s a Chinese company that has registered the mark in the telephones category (Apple owns it for hardware and software). That, folks, is about 1/4 of the world’s population to which Apple cannot market under the current name of the product without going through some sort of legal maneuvering (getting the existing Chinese mark invalidated or reaching some sort of deal with the mark’s owner).
ICANN is planning to do something very strange next year.
We’re all used to .com, .net, .info and the rest of the top-level domains (“TLD”) by now. Well, watch out, world — here come the branded TLDs!! We’ll soon see .ibm, .3m, .delain-law-office. All you need is the $185,000 (a bit more than spare change to a small business person) to purchase the TLD name (which is why you WON’T see .delain-law-office).
As a trademark lawyer who spends time extracting clients from unintended second-level domain name infringements, I can see the trademark knots coming down the pike. Not only will second-level domains get squatted; TLDs will get squatted and sold for $millions.
Amazing. And utterly confusing. Not a good move, ICANN.
Bad news for the home of the Big Mac. As described in this article from the Chicago Tribune, Malaysia does not view “Mc…” as associated with restaurants and food as a prefix to the intellectual property of McDonald’s Corporation.
Unlike the United States, which forced the closure of McBagels based on the use of “Mc…” in the food industry being deemed confusingly similar to McDonald’s famous mark, Malaysia has held that McCurry, ostensibly an abbreviation for “Malaysian Chicken Curry” is not rendered confusingly similar to McDonald’s famous mark merely by the addition of the “Mc” prefix.
I don’t know about anyone else, but when I hear that “Mc” in association with food, I immediately think of McDonald’s. I wonder what the Malaysian court thinks of? Actually, I wonder what they were thinking of?
This is good news for trademark owners worldwide. The Singapore Treaty, administered by the World Intellectual Property Organization (WIPO), will open the way for the branded goods industry to register and manage trademark rights cost-effectively and efficiently. The treaty “… standardizes procedural aspects of trademark registration and licensing and enables owners of trademarks and national trademark authorities to take advantage of efficiencies in using modern communications technologies to process and manage evolving trademark rights.” The USA ratified the Singapore Treaty on 1 October 2008.
Australia ratified the treaty on 16 December 2008. Australia was the tenth country to do so; therefore, according to its terms, the Singapore Treaty will go into full effect on 16 March 2009, three months after the tenth ratification. The ratifying nations are:
the Kyrgyz Republic
Over time, other WIPO countries will, we hope, join with these first ten under the Singapore Treaty on the Law of Trademarks to help to standardize trademark law throughout the world and make registration across international boundaries more and more seamless. More information about the Singapore Treaty can be found on the Singapore Treaty’s webpage on the WIPO site.