Hail to the….Washington Football Team?

By Jeannette M. Carmadella

The colossal trademark fumble of the Washington Redskins in failing to plan ahead for the need to change the team name has lessons for anyone contemplating a rebranding. The PTO’s “intent to use” application option process and other strategic preparation can avoid the vulnerable trademark position the team finds itself in.

The Washington Redskins made a widely-anticipated announcement last week that it was going to officially change its name and logo before the start of the new football season. Surprisingly though, the team did not have a new name selected at the time of the announcement, leaving fans and others to wonder why.

Several news reports suggest that the preferred replacement name has been temporarily held up by trademark issues. But this week the team pivoted, deciding instead to call itself the “Washington Football Team” throughout the upcoming season as “it continues to finalize a replacement name and logo.” While most people see the decision to rename the team as long overdue , the team’s failure to secure a new name confirms just how unprepared the Redskins were to make this announcement. It also highlights how important it is for all brand owners to pay attention to the market and be prepared well in advance of any attempt to rebrand.

The Redskins’ failure to have a new name secured prior to making this big decision is even more surprising because the name and logo have been criticized for decades as racist and disparaging to Native Americans. The REDSKINS trademark was even challenged in federal court (twice). Yet its owner has always remained steadfast that the team would never change its name. But over the past few months, and in direct response to the Black Lives Matter protests and attempts to correct racial injustice in our country, many companies have taken it upon themselves to re-brand. For example, Quaker Oats, owners of the brands AUNT JEMIMA and UNCLE BEN’S, quickly and publicly announced they would change their product packaging. The music group THE DIXIE CHICKS has since changed its name to THE CHICKS. And LAND O LAKES made quick work of removing the image of a Native American woman from its product packaging. The Redskins continued to drag their feet, only making their announcement to rebrand a week after FedEx, the primary sponsor and name holder of the team’s FedEx Field stadium, publicly asked the team owner to change the name. That same day Nike removed all merchandise from its website that included the word “Redskins.” Late to the party, stubbornness and failure to read the market has now left the team without a name for the 2020 football season.

The failure to make a decision that many saw as a long time coming, will come at a great cost to the Redskins. And not just in lost merchandise profits (who is really going to buy a $100 WASHINGTON FOOTBALL TEAM jersey?). The reason they have not selected a new name is because they have not secured trademark rights to their preferred replacement name. So now the million-dollar question is not what will the new name be, but who owns it. And the answer likely lies in the public records of the U.S. Patent and Trademark Office (“PTO”).

A search of the PTO public database shows that there have been more than 30 new trademark applications for variations of the term WASHINGTON for entertainment services, namely football games, and related merchandise (WASHINGTON ALLSKINS, RED WOLVES, RED TAILS, RADSKINS, etc.) Curiously, none of these applications are owned by Pro-Football Inc., the entity that owns and operates the Redskins team franchise and holds all of the REDSKINS trademark registrations. In fact, most of the new applications (as well as a few older registrations) are owned by one individual, Philip McCaulay, who undoubtedly hopes the team will choose one of these names and buy the mark from him.

This process known as “trademark squatting” takes advantage of the “intent to use” trademark application process allowed by the PTO. In addition to traditional “use” based trademark applications, the PTO allows applicants to reserve rights in a trademark by filing an “intent to use” (“ITU”) basis. In other words, you can apply for trademark protection of a word, slogan, logo, or design before you start using it. One must prove actual use before a certificate of registration is issued, but applicants have up to three years to do so. There is nothing illegal about trademark squatting, per se. As long as the applicant has a “bona fide intent to use” the mark, the application is valid. While one does have to eventually prove use to secure a registration, this isn’t as hard as it sounds. For example, Mr. McCaulay owns a registration for the mark WASHINGTON RED-TAILED HAWKS for “Providing a website featuring information relating to the sport of football.” He has a valid website located here:

http://www.washingtonamericansfootball.com/red-tailed-hawks-website.html.

While suspect, the website was accepted by the PTO as proof of trademark use entitling him to federal trademark protection.

The ITU trademark application process has its pros and cons. Whenever a company names a new product or service, it should always consider filing an ITU application. On the one hand, it allows a company to secure a name and obtain constructive priority of use well before using the mark. While this may not be an option for smaller companies or individuals, larger companies often use the ITU application process and domain name registration system to secure naming rights for products or services strategically. On the other hand, since all records are public, filing too soon can backfire and reveal a name before a company is ready to launch. Either way, in this case Pro Football Inc. was not diligent in establishing its rights, and the pros of filing at least one ITU application far outweighed any cons. Pro Football Inc. certainly could have secured these names well in advance, but instead chose to turn a blind eye to criticism and the reality of th situation. If one of the preferred team names is already claimed by another, the team is left in the vulnerable position of having to negotiate the purchase or license of a name for the team from someone else. In the meantime, it has relegated itself to the lackluster “Washington Football Team” while it finalizes a replacement name and logo. Whatever the new name may be, the Washington Football Team will forever be an example of what “not to do.”

Any decision to rebrand must be made intelligently and well in advance of any public announcement. It is imperative for companies to do their homework before selecting a new name, including conducting the appropriate trademark clearance searches and analysis. Social considerations are more important now than ever, and any new marketing strategy should take into consideration both the legal and social implications of the change. Finally, it is not enough to make a change. Any rebrand must thoughtfully address the reason the change was needed in the first place. The Redskins are not in the clear yet. Whatever new name is selected should be certain not to offend. Any remote association with Native Americans or related iconography (e.g. WASHINGTON WARRIORS) could still be met with severe public backlash. The mismanagement and tone-deaf history of the team’s ownership suggest perhaps the WASHINGTON FOOTBALL TEAM may be the best and safest choice after all.

Of related and paramount importance is the selection of a companion domain name and website. Delay and indecision can be fatal to a successful brand launch.

This is the first of several posts we will write in a series that addresses the issues brand owners may face when deciding to rebrand before, during and after a crisis If you are considering a new brand or a rebrand or have questions about protecting your current brand in light of the social movements in our country, please contact us at jeannette@lutzker.com and we are happy to talk through these important considerations.