Q&A: Trademark Expert Mark Sommers on Washington Football Team's New NameQ&A: Trademark Expert Mark Sommers on Washington Football Team's New Name

The National Football League (NFL)'s Washington, DC team will reveal its new name on February 2, 2022. The announcement comes after years of critique of the franchise's former name, "Redskins". In 2015, the U.S. Patent and Trademark Office (USPTO) deemed the "Redskins" trademark disparaging and restricted the name from being a federally registered trademark. Westlaw Today interviewed Finnegan attorneys Mark Sommers, Patrick Rodgers, and Jessica Hannahto discuss the trademark history behind the "Redskins" name and the possible trademark issues the team may face with the adopting of a new name.

Mark explained the history behind the "Redskins" name:

"Before becoming Washington, D.C.'s NFL franchise over eight decades ago, the team started as the Boston Braves in 1932. The "Braves" name was chosen as homage to the stadium where the team played at the time - Braves Field in Boston, Massachusetts. After the team's inaugural season in 1932, the team owner George Preston Marshall changed the team's name to the Boston Redskins, reportedly to avoid confusion with MLB's Boston Braves and in an apparent effort to pay respect to the team's coach William Henry "Lone Star" Dietz, whom people believed was part Native American - a story later debunked in 2004 as untrue. The Boston Redskins name was also reportedly chosen to pay respect to the Native Americans who played on the team at the time. The Boston Redskins were moved to Washington, D.C., in 1936 and kept the "Redskins" name. The Washington NFL franchise continued the narrative that the "Redskins" name was meant to pay tribute to Native Americans, but that narrative became stale over the last few decades when the use of Native American names as sports team names melted under the heat of public outcry, hard-fought gains in diversity and inclusion, and current social norms. It came as little surprise that the "Redskins" name was eventually judicially (and judiciously) declared a disparaging racial slur."

Mark also addressed the possible trademark issues the team may consider before changing its name:

"In addition to marketing and business considerations, the ability to obtain a trademark registration for the new name is paramount. Many companies/teams involved in prominent rebrands take great pains to avoid premature disclosures of their new names. One practice used to avoid premature new name disclosure is the filing of initial trademark applications in countries where it is difficult to search the database of pending trademark applications online, such as Mauritius. By contrast, in countries like the United States, official records show new trademark applications shortly after they are filed, which allow inquisitive press and name-squatting opportunists to easily learn of new names.

The Cleveland Guardians used Mauritius' relatively "secret" trademark application database by filing for the CLEVELAND GUARDIANS trademark in that country in April 2021 and then filing a U.S. trademark application for CLEVELAND GUARDIANS in July 2021, around the time when it publicly announced its new name. The U.S. application for CLEVELAND GUARDIANS claimed priority back to the filing date of the Mauritius application, which allowed the team to keep the new name relatively hidden before its July announcement. At the same time, the team benefited from the earlier April filing date to frustrate third-party efforts to learn of the new name, forestalling both untimely breaking news and enterprising name squatters.

As the Cleveland Guardians name change teaches, obtaining trademark registrations for a new name is not the only hurdle for prominent sports team name changes, as third parties may own unregistered common law rights in the same or confusingly similar names. In the Cleveland Guardians case, a Cleveland roller derby team was already named the Cleveland Guardians. The Cleveland Guardians roller derby team filed a trademark infringement suit against the Cleveland MLB team a few months after the new name announcement in October 2021. Guardians Roller Derby v. Cleveland Guardians Baseball Co. LLC, No. 1:21-cv-2035 (N.D. Ohio 2021). The roller derby claimed use of the CLEVELAND GUARDIANS team name since 2013 and asserted that the Cleveland MLB team offered the Cleveland roller derby team a "nominal" amount for the roller derby team's name during discussions that happen during that summer. A month after suit was filed, the teams issued a joint statement in November 2021 announcing an "amicable resolution" allowing both teams to use the CLEVELAND GUARDIANS name. Although the terms of the agreement are not public, the fact that the teams use different color schemes and distinguishable logos likely contributed to the teams' conclusion that peaceful coexistence of the CLEVELAND GUARDIANS name was possible. For the Cleveland Guardians MLB franchise, maintaining the team's brand identity through continued use of the same color scheme and similar logos was not only important to connect with the team's fanbase, but also for distinguishing the Cleveland MLB team from Cleveland Guardians roller derby team. For these reasons, sports franchises often use the same colors and similar logos after a name change. Given the long association of the familiar burgundy and gold colors with the Washington NFL franchise, those same colors will likely to be used with the new name."

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