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Robert Weisbein, Gregory Marino, and Emily Ostreich | Has a trademark Hog muddied the Washington Football Team’s name change plans?

A trio from Foley & Lardner LLP look at the complex trademark issues surrounding the pending name change for the Washington Football Team.

After decades of mounting pressure from Native American groups, fans, activists and even corporate sponsors, the NFL’s Washington Redskins recently announced that it would be changing its team name and logo after 87 years of use. The name change comes amidst a cultural shift in America, where newfound attention to the grievances of historically marginalized groups is spurring change in almost every aspect of public life.

On July 23, the Redskins then said that during the 2020-21 NFL season the franchise would compete under a placeholder name: the Washington Football Team. When a permanent name is eventually chosen, it will constitute the first full name change by an NFL team since 1999, and the league’s first such change predominantly motivated by racial or ethnic sensitivity.

Robert Weisbein

Announcing the change has engendered broad public support, but actually choosing a new and final name could prove a more challenging task, especially since the team announced the change without also announcing the official new name. This unique situation has essentially created a “race to the trademark office”, further complicating an already complicated situation.

Since the initial announcement of the intended name change, identities such as Washington Warriors, Washington Americans, Washington Redtails, and Washington Redwolves have been floated on social media and elsewhere as potential replacements, but no official decision on a new permanent name has yet been announced.

Rebranding one of the most iconic franchises in sports is no small task, but it appears that the delay in choosing a permanent new name for the team has been caused not by general rebranding logistics, but rather by a motivated trademark troll.

Lifelong Washington Redskins fan, Martin McCaulay, already owns trademark registrations and pending applications for some of the leading name choices purportedly under consideration. Should the team wish to change its name to one that McCaulay has sought to protect, it might find itself having to negotiate with McCaulay, an ordinary fan with perhaps extraordinary leverage.

McCaulay, for his part, has made it clear through both his attorney and his own tweets that he supports a name change and does not want to delay or hinder the process, but speculation of a potential standoff between Redskins ownership and the fan continues to build.

Although McCaulay purportedly does not want to stand in the way of the name change, the fact is that he owns trademark registrations and applications for numerous potential

Gregory Marino

team names, and is therefore in a unique position to do just that. His registrations include: Washington Red-Tailed Hawks and Washington Americans in International Class 41 for “Providing a website featuring information relating to the sport of football,” as well as Washington Football Club in International Class 25 for athletic shirts, sports caps, and hats.

Additionally, McCaulay has pending intent to use trademark applications for Washington Warriors, Washington Americans, Washington Redtails, Washington Veterans, Washington Red Wolves, Washington Renegades Gridiron Football, and Washington Monuments, with the latter six filed with the United States Patent and Trademark Office (USPTO) on or after June 2020.

Pathways to Secure a Trademark

The Washington Football Team essentially has three different ways in which they can obtain a trademark for a new team name: (1) change the name to one that is completely unique and free from any trademark clearance issues; (2) use one of McCaulay’s registered marks and petition to cancel his registration with the USPTO; or (3) use one of McCaulay’s applied-for marks and challenge his application.

The first option is the most straightforward, but would require abandoning several branding options that have gained traction within the Washington Football Team’s fan base. It is therefore likely that the team is deciding between the latter two options.

If the Washington Football Team wishes to use one of McCaulay’s registered marks and cannot reach a deal, they will have to petition the USPTO for cancellation of the mark, and argue that McCaulay has thus far not used the mark “in the ordinary course of trade” as required by the Lanham Act, a US federal statute governing trademarks, service marks, and unfair competition.

Emily Ostreich

The Lanham Act defines “use in commerce” as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark”. The US Court of Appeals for the Second Circuit addressed this standard in Momentum Luggage & Leisure Bags v. Jansport, Inc., holding that de minimis sales do not constitute “ordinary course of trade”, as “sporadic sales activity” does not meet the statutory requirement set forth under the Lanham Act.

McCaulay appears to be aware of the “use in commerce” requirement, as he has created a website where he purports to sell t-shirts, coffee mugs, and wine glasses with the trademarks Washington Americans, Washington Renegades, Washington Red-Tailed Hawks, and Washington Redtails.

However, whether McCaulay’s website and the sales are more than de minimis is another question that would involve additional considerations. If challenged, McCaulay will have to show that his website was created with the intention of distributing goods and/or rendering services.

Further, it is not enough that the website is operational. McCaulay must demonstrate sufficient ongoing sales to constitute use of the mark “in the ordinary course of trade”.

The other option is for the Washington Football Team to change the team name to one of McCaulay’s applied-for marks and then seek to challenge his application on the grounds that it was not filed with a “bona fide” intent. The six trademarks that McCaulay filed on or after June 2020 were filed on an “intent to use” basis.

When filing an “intent to use” application, the Lanham Act requires the applicant to show objective evidence of facts and actions that exhibit a “bona fide” intent; therefore it is within the purview of the courts to decide what the term means. In M.Z. Berger & Co. v. Swatch AG, the U.S. Court of Appeals for the Federal Circuit held that “bona fide” intent should be determined case-by-case based on the totality of the surrounding circumstances.

The court recognized that the plaintiff lacked a “bona fide” intent because it provided documentary evidence solely for prosecution purposes and lacked evidence of business plans to commercialize the mark, as well as purposely listed broad categories in the application with the intention to “leave all doors open”. This led the court to conclude that the plaintiff’s application was merely filed to reserve a right in the mark, which is prohibited.

McCaulay’s recent filings may not meet the “bona fide” intent requirement. The possibility of a team name change likely motivated McCaulay’s filing of his June applications, lending credibility to an argument that he submitted the applications as part of a scheme to force the team to pay him for his alleged rights.

If the Washington Football Team can show that McCaulay was simply “leaving all doors open” to trademark potential team names in the hopes of capitalizing in some way in the future, the team would have a strong case in opposing the registration, and potentially sidestep McCaulay altogether.

It could take a year or longer for McCaulay to obtain registrations for his June applications, depending upon both the often lengthy trademark prosecution process and the time it takes McCaulay to begin using any of the marks in commerce. It is also possible that the USPTO will reject McCaulay’s applications based on their merits alone.

Either way, this uncertain timeline also affects what is now the Washington Football Team, which could be forced to negotiate with McCaulay to purchase his purported trademark rights without knowing what rights he actually has. With the NFL regular season opener on the horizon, time is of the essence if the team is to effect such a massive branding facelift in a short period of time. Within this narrow window, however, the team will find it difficult to assess the fair value (if any) of McCaulay’s purported rights.

Conclusion

McCaulay has been vocal about his position on Twitter, where he has proclaimed himself the “Trademark Hog” and asserted that he emailed the NFL on July 4, 2020, offering to give the league his trademarks for free, but simply never heard back.

It is still unknown whether the NFL has reached out to McCaulay or his attorney, however McCaulay purported to offer the Washington Football Team another deal where he would “sign any papers the team wants him to sign” should they wish to change their name to the Washington Redwolves, so long as the team makes donations to the American Indian Graduate Center, Defenders of Wildlife, and the Wolf Conservation Center.

Whether McCauley actually presented these or any other conditions to the NFL is anyone’s guess, but with a little less than two months until the NFL’s 2020 season opener, it is now up to the NFL and the Washington Football Team to decide how the rest of this saga will play out.

The fact that an interim name has been chosen for the 2020-21 NFL season may signal that strategic negotiations are ongoing. If the team wants to adopt one of McCaulay’s marks, given the exigencies of the circumstances and the immediate need for certainty of the name’s availability, the most prudent course may be to make a deal with the “Trademark Hog” no matter how muddy the circumstances.


Robert S. Weisbein is a partner and intellectual property litigator with Foley & Lardner LLP. Gregory A. Marino is a litigation attorney with the firm, while Emily Ostreich is a summer associate and attends Emory University School of Law in Atlanta.

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