Professor Jeremy Sheff was quoted in an article on today’s decision by the United States Patent and Trademark Office to cancel several trademark registrations owned by the Washington, DC National Football League franchise. The article states in part:
A person (or organization) gets a trademark by using it in commerce, and registration is simply an extra step that confers extra protections. “The Lanham Act gives the senior user of a mark the right to prevent others from using a mark that is likely to cause confusion, regardless of whether the mark is registered,” says Jeremy Sheff, an intellectual property law professor at St. John’s.
. . .
It’s theoretically possible that a judge would restrict the team’s common law rights on the basis that the marks are disparaging, but unlikely — and we probably won’t find that out until the team actually sues someone using the name and logo.
“There’s a chance that the 'Redskins' mark will eventually be found not only unregisterable, but unenforceable,” Sheff says. “But I don’t think it’s a strong one.”