Third and Wrong – A $3,000,000,000 Franchise’s Mismanagement of their Trademark

By Trey Parham

The 2020 Football season will give fans across the country a glimpse at a truly rare occurrence.  No, not empty stadiums.  Not even Tom Brady in a Buccaneers jersey, but a 3-billion-dollar franchise whose mismanaged their trademark so poorly, that they have had to transition their professional football team into a generic mark, which affords its owners no federal trademark protection.

In July of 2020, the NFL franchise formerly known as the Washington Redskins, officially changed their name to simply, Washington Football Team.  The new team name was put in place solely for the 2020 NFL season, and currently is set as a place holder pending the adoption of a new team name.  The revised team name was the result of the NFL franchise facing pressure to change its name due to the racist connotations associated with the Washington Football Team’s former nickname.

The Washington Football Team’s troubles with federal trademark protection did not begin in 2020, but has been the topic of much dispute dating back to 1992, when Suzan Shown Harjo, President of the Morning Star Institute, petitioned the USPTO to cancel the trademark registrations owned by the Redskins' corporate entity of Pro-Football, Inc.  That legal battle continued in various iterations until 2017, when the Supreme Court ruled in Matal v. Tam, that the disparagement clause of Lanham Act, prohibiting federal trademark registration for marks that might disparage any persons, living or dead, was facially invalid under First Amendment protection of speech.  However, with Pro-Football, Inc.’s legal troubles finally behind them, their Trademark, which had been federally registered since 1974, could not withstand the court of public opinion, and a move away from the name “Redskin” was finally made.

This nearly 30-year battle between the Washington Football Team, the USPTO, and the court of public opinion serves as a real-life example of how important choosing the proper trademark is for your business, and that only marks that comply with the requirements of 15 U.S.C §1501 et. Seq. (aka the Trademark Act of 1946), can be federally protected.  The most relevant portions of the Trademark Act to this article are:

§ 2 (15 U.S.C. § 1052). Trademarks registrable on the principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States…

…(e) Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them.

These statues set out two important parameters for federal trademark protection: (1) your trademark cannot be disparaging, immoral, scandalous, or falsely imply a connection to something, and (2) your mark must not merely describe the goods or services offered under the mark.

With its 2020 name change, the Washington Football Team essentially went from a trademark that violated Section 1052(a) to a mark that violated 1052(e), and therefore does not qualify for federal trademark protection.  Instead of transitioning to a mark that could persist for decades, Washington elected to use a “generic” mark during the 2020 season, in hopes of eventually settling on a more protectable mark.  However, such future mark would need to comply with section 1052 and would need to be either suggestive, arbitrary, or fanciful.

Suggestive marks merely suggest the qualities or attributes of a good or service offered under the mark. Suggestive marks differ from descriptive marks (ex: Washington Football Team) by merely suggesting an attribute of the good or service.  Examples of federally-protected suggestive marks are “Coppertone” which suggests tan skin or “Blimpie” which suggests the shape of their submarine sandwiches.  An arbitrary or fanciful mark is either a real or made-up word that has no relationship to the good or service associated with the mark.  Perfect examples are such marks are “Apple” electronics, “Starbucks” coffee, and “McDonalds” food. These marks contain real words, but no rational consumer purchases products from these companies believing that they are buying fruit, a star, or some old man’s farm.

The Washington Football Team, in eventually choosing a mark that can afford them federal trademark protection, must pick a mark that distances itself from football in a manner similar to the “Green Bay Packers” or the “Los Angeles Chargers.”  Simply choosing a generic team name, such as the Washington Football Team, does not allow Pro-Football, Inc. to prevent an unaffiliated third party from putting the name “Washington Football Team” on starter jackets for profit.

With the Washington Professional Football team being a present example of such, choosing a proper trademark for your business, or the goods and/or services that your businesses offers, should be on the forefront of all business development discussions. At Mayer LLP, we have the resources to not only help our clients choose trademarks that meet the goals of their business, but we help ensure that those marks can be federally registered, protected, and enforced.

As your business continues to grow, develop, and innovative, please keep your company’s intellectual property portfolio in mind during any and all discussions relating to branding. As a properly protected trademark can ensure that your business can expand unencumbered, with the ability to capitalize on the goodwill that the public associates with the goods and services offered by your business.  You don’t want to end up with a $3 billion product without a name.