Business
On July 3rd, the Washington Redskins announced that it would review its team name after nearly two decades of vigorously fighting legal challenges by Native Americans to keep it. Two registration cancellation actions filed in the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office[1] culminated in Pro-Football, Inc. v. Blackhorse, a decision by a federal district court in Virginia on July 8th, 2015, that the “REDSKINS” name and federally registered trademark was considered disparaging of Native Americans under Section 2(a) of the Lanham Act and therefore not eligible for federal trademark registration under U.S. trademark law. While the Redskins were appealing their registration cancellation decision to the Virginia federal appellate court, a landmark Supreme Court case, Matal v. Tam, held that the disparagement clause of Section 2(a) of the Lanham Act was unconstitutional for violating First Amendment free speech rights when it reviewed a trademark registration refusal by the USPTO of the “SLANTS” mark by an Asian-American music band. Thus, the law on which Native Americans were able to have the REDSKINS registered marks canceled was stricken, and the Redskins managed to preserve the team’s right to register its controversial marks. Enter the force of the market, arguably more significant than the force of law, and the Redskins suddenly have a change of heart. Companies that generate revenue for the Redskins began targeting what matters most to the team – its wallet. FedEx, which owns naming rights to the team’s stadium, announced the night before that it would exit the multimillion-dollar agreement if the team did not change its name. The Redskins were also under pressure from other big sponsors and resellers of its merchandise that featured their registered trademarks, including Amazon, Walmart, Nike, and Target, all of which stopped carrying the team’s merchandise. The monetary pressure mounted to the point where Dan Snyder, the team owner, was forced to wave the white flag. The team had maintained its controversial Redskins name since it was initially adopted in 1933. However, on Monday, the NFL’s Washington team officially announced that it would abandon its name and its 1970s-era logo, depicting the profile of a Native American man. Following the team’s announcement that it will abandon its name, speculation on what the new name will be has run rampant, and so have new trademark applications for possible names, similar to the situation discussed in our April 23rd, 2020 blog article entitled “Everybody “COVIDS” a CORONAVIRUS Trademark Registration But It’s Not That Easy.” A review of trademark applications demonstrates that McCaulay, an Alexandria, Virginia, realtor, has attempted to register trademarks on eight different Washington-themed names, several of which have new applications filed this month. McCaulay has received registrations for “WASHINGTON RED-TAILED HAWKS,” “WASHINGTON AMERICAN,” and “WASHINGTON FOOTBALL CLUB and he tried to register at least a couple of trademarks as early as 2014.” McCaulay owns pending applications to register ‘WASHINGTON RED WOLVES,” WASHINGTON REDTAILS,” “WASHINGTON MONUMENTS,” “WASHINGTON VETERANS,” WASHINGTON RENEGADES GRIDIRON FOOTBALL,” and “WASHINGTON WARRIORS.” McCaulay’s trademark registrations have made him a target of many football fans who are labeling him a trademark troll. However, as our previous blog in April blog pointed out, “trolling” to own trademark registrations for marks believed to be on the verge of extraordinary popularity has been increasingly trending for some time now and is rarely successful. After the widespread criticism of McCaulay for attempting to appropriate team names expected to be desired by the Redskins and thereby delay their renaming process – despite the Redskins’ negligence in failing to procure alternate names much earlier before being pressured to do so –McCauley has retained a sports attorney who has since sent Dan Snyder a letter stating that McCauley is not a trademark troll because “this was simply just an expensive hobby for him and he does not have any intention of holding up the Washington team’s process.” Interestingly enough, Las Vegas sportsbooks such as Bovada, have the Red Tails, Warriors, and Monuments listed as three of the top five betting favorites for Washington’s new NFL team name. Only time will tell if McCaulay’s tactics will lead to a settlement with the team and a huge paycheck. If you suspect that someone is squatting on trademark registrations to force a buyout before you use the name for your business, you may need to seek assistance from a trademark lawyer at Dunlap Bennett & Ludwig. There are avenues to challenge and even cancel weak trademark registrations that were only made as an impediment to someone else using the naming rights. One of our firm’s experienced trademark lawyers can help you secure the trademark you need today. Contact our team at 703-777-7319, or email clientservices@dbllawyers.com to schedule a consultation. [1] The first cancellation proceeding was determined to have been invalid for having been filed after the statute of limitations. The second cancellation proceeding was filed by recently emancipated minors for whom the statute of limitations was refreshed. https://www.dbllawyers.com/washington-redskins-trademark-registration-challenge/