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Commentary: Contesting the Incontestable–How the REDSKINS Decision Will Impact Trademark Law

January 21, 2015

Blog

Commentary: Contesting the Incontestable–How the REDSKINS Decision Will Impact Trademark Law

January 21, 2015

Back to Fish's Trademark and Copyright Blog

 

On June 18, 2014 the Trademark Trial and Appeal Board ordered cancellation of six registrations of the word REDSKINS in various configurations, four of which were “incontestable.”  The ground for cancelling the registrations was that the word REDSKINS “[c]onsists of or comprises . . . matter which may disparage . . . persons, living or dead.” Such proceedings are enabled by Section 14(3) of the Trademark Act, which authorizes petitions to cancel on grounds that the registrations were obtained contrary to the provisions of Section 2(a).

An “incontestable” registration is one which has become so pursuant to Section 15 of the Trademark Act.  There is no definition of “incontestable” or “incontestability” in either Section 15 or the “Definitions” section of the Trademark Act.  Logically, this means that “incontestable” means in the Act what it means in the English language, that is–“not contestable: indisputable <an ~ fact> <~ talent>”.

One interesting, and thus far surprisingly untouched, issue in this case is that nowhere in the massive majority opinion of the Board (one of the three administrative judges dissented; the majority opinion approximated 90 typed pages) is the question of whether years after registration and “incontestability,” cancellation can even be entertained.  Certainly cancellation proceedings qualify as a “contest”, yet how is this reconciled with the fact that Section 15, which specifically enumerates certain exemptions to “incontestable” status, does not identify that a mark is disparaging as one of the exemptions from “incontestability” status?

The Patent and Trademark Office must have profited considerably from additional fees for filing affidavits conferring “incontestability” upon trademark registrations.  While it would no doubt be unseemly to maintain incontestable status in some situations (for example, fraud–which is a statutory exception to “incontestable”status), it is reasonable to expect a clearer definition from the Office and/or Congress of exactly what “incontestable” means. To accept fees for making registrations “incontestable” and then have those registrations subject to cancellation on a grounds for refusing registration in the first place smacks of pilferage.  At the very least the Trademark Act ought to be revised to clarify whether the registration bars of Section 2(a) can be a basis for challenging an “incontestable” registration.

 Author’s note: On January 9, 2015, The Department of Justice moved to join the case, apparently for the sole purpose of defending the Constitutionality of Section 2(a) of the Trademark Act; there has been some argument to the effect that if Section 2(a) prohibits registration of REDSKINS (because it is disparaging), it violates the First Amendment right to “freedom of speech.”  Fish & Richardson abstains from any comment on this argument, at least in this commentary.  

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