football

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A while ago, we discussed on this blog that the American football team from Washington D.C. was dropping its traditional name. The pressure from Native American advocacy groups (that considered that the name “Redskins” had racist connotations) ultimately affected the team and particularly the sponsors, which threatened to terminate their agreements unless the team was renamed. As a result, the team abandoned the name it had since 1933 and was temporarily renamed as Washington Football Team.

This decision had a clear financial impact on the entity. The “Redskins” trademark had become one of the team’s most significant assets. Exploiting the trademark for goods and services provided the entity with major income. The new name, which was supposed to be temporary, was not as attractive as the previous one but still turned out to be appealing. According to Forbes.com, the new name allowed the entity to preserve its overall value, securing over USD 220 million in income during the 2020-21 season directly from exploiting the “Washington Football Team” trademark. In fact, given its success, the entity is considering keeping the name.

Obviously, Pro-Football, Inc. (“Pro-Football”) the company operating the team’s assets, was aware that the new name was valuable and thus applied for a trademark covering many goods and services to the United States Patent and Trademark Office (USPTO) in July 2020. The point was to ensure the appropriate exploitation of the entity’s new name until it was renamed or it decided to keep “Washington Football Team.”

It was a surprise when the USPTO recently notified that it had initially rejected the “Washington Football Team” trademark application. According to the news, the USPTO gave the applicant six months to bring new arguments to change its mind. This was another bump in the road to renaming the Washington D.C. team.

According to the news on this topic, the USPTO has raised two issues regarding the trademark application, so Pro-Football must file arguments to counter them.

First, according to the USPTO, the requested trademark is overly generic, i.e., the name “Washington Football Team” is not distinctive enough to allow the applicant to use it exclusively.

This should be easy to solve by submitting evidence confirming that the trademark name actually identifies the applicant. Given the massive dissemination of the name “Washington Football Team” during more than one season by the team, the media and other channels covering the US National Football League, this first issue should not be an obstacle. If the applicant submitted evidence, the USPTO would probably find that (i) the trademark name identifies the applicant; and (ii) it is actually a well-known, widespread name.

The second issue raised by the USPTO seems more complicated, as it found that the requested trademark is confusingly similar to an accepted trademark application based on the name “Washington Football Club.” This trademark was granted in 2015 and registered under international class 025, covering sports clothing, caps and hats.

Paradoxically, the owner of the trademark blocking Pro-Football’s application is a Washington fan, Martin McCaulay.

As he has told the media, he registered several trademarks that were potential team names for the Washington D.C. team as a “hobby.” Mr. McCaulay owns many trademarks, including Washington Americans, Washington Senators, Washington Bravehearts, Washington Veterans, Washington Pandas and… Washington Football Club.

This makes it difficult to find a solution other than reaching an agreement with the pre-existing trademark owner. For example, to reduce the risk that someone could challenge the effective use of “Washington Football Club,” Mr. McCaulay posted messages on his social media confirming that he has been shipping “Washington Football Club” clothing to customers. Similarly, Mr. McCaulay’s lawyer posted a Twit inviting the team to negotiate with his client a solution to the eventual rejection of the application, showing the possible complications otherwise.

This whole problem may end up being a storm in a teacup, if the team chooses a different name. However, until then (or if the team finally keeps “Washington Football Team), there will be significant risks in the entity’s day-to-day management, e.g., not being able to prevent third parties from marketing goods based on that trademark (if the application were finally rejected).

Author: Albert Agustinoy Guilayn

This post is also available in: Español

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albert.agustinoy@cuatrecasas.com