In a high-profile rebrand, the trademark process may be the most important part.
High profile brands need to understand what is happening with the Washington Football Team (WFT) Trademark and how they can avoid a similar situation. Brands in the sports and entertainment industry are uniquely vulnerable to expensive trademark snafus and need to understand how these battles can be avoided.
What is Going On?
The WFT trademark battle has been going on for decades (like, literally since 1992). For those who came in late: The WFT was established in 1932 and first registered its old trademark - the Redskins - in 1967. Lawsuits followed by indigenous stakeholders because the Lanham Act (the law governing US trademarks) prohibited the registration of trademarks that disparage individuals or groups of people. In 2006, Native American plaintiffs filed to cancel the disparaging trademarks. They fought until June of 2014 when the Trademark Trial and Appeal Board ruled in their favor and concluded that all trademarks bearing the word “Redskins” should be cancelled.
Unbeknownst to the Washington Football Team, an unknown party was quietly monitoring the situation. In 2014, a man named Philip Martin McCaulay filed ten trademark registrations for a variety of potential new team names. By doing so, he effectively eliminated viable new name options for the team.
The Supreme Court Changes the Rules
But by then, another case was already winding its way through the courts that would change the calculus. In 2017, the Supreme Court sent shock waves across the country with its decision in Matal v. Tam. In this case, the Supreme Court ruled that the disparagement clause of the Lanham Act was unconstitutional. In other words, people theoretically now have free reign to register trademarks that disparage other people (yikes).
As a result, the Redskins trademark was legally resurrected. But by 2020, public and sponsor outcry finally accomplished what litigation could not - on July 13, 2020, the team announced that it would change its name. Since then, the team has been using the temporary name “Washington Football Team”, and on July 23, 2020 the team filed to protect the name with a registered trademark.
Now remember Mr. McCaulay? The man who registered a bunch of potential team names back in 2014? Turns out he still owns many of those trademarks. By my count, he has filed over 20 applications to register Washington football-esk trademarks. As a result, the USPTO ultimately rejected the WFT trademark application because it was judged too similar to McCaulay’s “Washington Football Club”. The incident has added further embarrassment to a re-brand that is already under immense scrutiny.
And what of Mr. McCaulay? Interestingly, on July 17, 2020 he filed yet another trademark application for the name “Trademark Hog”.
Takeaways for Any Business Considering a Rebrand
Rebrands can be exciting, but they are never easy. Some rebrands are voluntary, others are forced through litigation. Regardless of why a rebrand is happening, business owners can save themselves from embarrassment and hardship by locking down new trademarks ahead of time. Once the rebrand has become public, this can create a “race to the trademark office” and make a business vulnerable to trademark squatters and opportunists.
The bottom line? Don’t be the last one to file your own trademark.
Thanks for reading the Bevel Law Blog! While this information is hopefully helpful to you, nothing in this blog is intended to be legal advice. Always consult a lawyer before making any legal decisions based on topics in this blog.
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