#SportsLawSimplified: Washington’s Trademark Fumble

On July 13, 2020, the Washington NFL Team formally announced that, following the team’s internal review of the “appropriateness” of the team name, they will be retiring the Redskins name. It seems NEVER (team owner Dan Snyder told us to use caps) changing the name really just meant seven years.

The decision to change the team name will make the Washington NFL Team the seventh American professional team since 1997 to change names without relocating to a new city, and will make them the first NFL team to do so since the Tennessee Oilers became the Tennessee Titans back in 1999. While the decision to change the name should likely have been a straightforward one given the controversy surrounding the term, the Washington NFL Team’s next several steps are, to put it lightly, convoluted

According to Oddsshark.com, some of the betting favorites to become the Washington NFL Team’s new nickname include the Redtails, Monuments, and Americans. There’s just one problem, though – one man, Philip Martin McCaulay, already has registered trademarks for all of those terms, and he’s not alone. Dozens have used the recent news of the name change to file for trademark protection, hoping that their Washington-related trademark will be the one the NFL team hopes to use as its new name (none more comical than the “Washington Radskins”). Are these people just trademark squatters? What is a trademark squatter? For that matter, what is a trademark?

Before we dive into the Washington NFL Team’s dilemma, let’s bolster our knowledge of trademarks. A trademark is a word, phrase, symbol and or design that identifies and distinguishes the source of the goods of one party from those of others. You see the logos below and are immediately able to identify the source of the goods associated with those logos. 

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There are four categories of trademarks, in order of least to most powerful: generic, descriptive, suggestive, and arbitrary/fanciful.

  • A generic term can never be afforded trademark protection. For example, you cannot trademark the term car, because then all other car sellers would be (unrealistically) barred from using said term.
  • Descriptive terms merely describes the good or service. If I created a fast-acting glue and wanted to name it Fast Acting Glue, that trademark would likely be denied for being too descriptive of the product. However, a descriptive term can gain trademark protection if it acquires distinctiveness, à la American Airlines.
  • Suggestive terms, unlike descriptive terms, require some reflection to connect the term to the nature of the good. Think of Coppertone sunscreen. The name of the product subtly suggests that if you use it you’ll have a nice copper-like tone.
  • Arbitrary and fanciful terms are terms that are either made-up words or real words that bear no relationship to the good they are associated with. Apple is arbitrary because an apple has nothing to do with computers, but if Apple were instead in the business of selling apples, then the term would not be arbitrary. 

So, what’s the ® all about? Trademark rights can be acquired in one of two ways: either through common law or through registration with the United States Patent and Trademark Office. If you see a trademark accompanied by the ®, that means it is a registered (hence “R”) mark with the USPTO. Registering a trademark, while not imperative, provides significant advantages over a non-registered counterpart:

  • A legal presumption of your ownership of the mark and your exclusive right to use it throughout the country
  • A constructive notice nationwide, which prevents anyone who adopts the mark after the date of registration from claiming that they did so in good faith
  • If anyone anywhere in the country were to use your registered trademark, or one that is similar enough to lead an ordinary consumer to be confused as to the source of the product, you could sue them for trademark infringement

That concludes our Trademark 101 review.

Let’s get back to that Washington NFL Team. Old name is officially out, and it is time for a new one. But what if the new name the Washington NFL Team decides on has been filed for as a trademark or is a registered trademark already? Let’s start with the former. There are several trademark filings that are pending that should be rejected quite swiftly, because when filing for a trademark with the USPTO, one requirement the applicant faces is to identify the particular goods or services on or in connection with which it uses or intends to use the mark (remember that Apple can’t now sell apples). You cannot file for a trademark and anticipate it to be all encompassing. So, back to the hysterical pending trademark that is the “Washington Radskins.” Said application’s designation of goods and services is “Entertainment services in the nature of professional athletes competing in namely presentation of pro football contests.” Unless this is the Washington NFL Team in disguise, which would somehow make this comical filing even funnier, there is no way that this applicant is using, or intends to use, this mark in connection to the goods and services listed.

That brings us to another critical requirement of a trademark application. A trademark applicant must claim at least one of five filling bases for its application, the two main bases being an actual use of the mark in commerce or a bona fide intent to use the mark in commerce in the near future. So, if you are not actually already using the mark, or if you do not have a legitimate intent to use it in the future, your application will be denied. While leg day is always encouraged on this site, these squatters are not welcome here. 

Does that make Philip Martin McCaulay nothing but a squatter? Not necessarily. McCaulay is no stranger to this trademark rodeo. Back in 2014, the Washington NFL Team actually had their six trademarks canceled when the Trademark Trial and Appeal Board voted 2-1 to do so, claiming the term Redskins was disparaging to a “substantial composite of Native Americans.” Previously, disparaging terms were prohibited under the Lanham Act, which is the primary federal statute dealing with the registration and enforcement of trademarks. However, the “Disparagement Clause” contained in the Lanham Act was deemed unconstitutional by the Supreme Court in 2017 in the case between Matal v. Tam. How does this involve McCaulay? In 2014, when the Washington NFL Team had their trademarks canceled, he saw this as an opportunity to start his “trademark squatting hobby.” McCaulay has not lost his touch over time. In a recent interview McCaulay stated that he has filed for trademark protection on over 40 terms that could be potential new names.

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It is important to note, however, that McCaulay has actually been granted trademark protection by the USPTO in the past. He currently has the term “Washington Red-Tailed Hawks” trademarked, and skirts around the requirement of actual use in commerce by selling t-shirts that contain the mark on his website, which is certainly worth a visit. On the site he discusses his pending applications, and the issue of the Washington NFL Team possibly wanting one of the terms. McCaulay claims he intends to start a recreational flag football league in the Washington D.C. area in the year 2021 (let’s hope social distancing is not still necessary by then). McCauley’s flag football league will feature the Washington Red-Tailed Hawks, Washington Americans, Washington Veterans, Washington Monuments, and the Washington Renegades Gridiron Football –  all registered trademarks McCaulay claims to have obtained back in 2015. Naturally, as any flag football connoisseur would tell you, no league is complete without expansion teams. Those expansion teams would obviously be named the Washington Warriors and the Washington Red Wolves, contingent on approval of McCaulay’s trademark application.

This brings us back to the main question – what happens if the Washington NFL Team wants to use a name that is either a pending trademark under review by the USPTO or is already a registered trademark? The former issue was already somewhat dismissed as nonconsequential, since most of the pending applications were most likely not filed in good faith with an actual intent to use in commerce in the near future. But it appears that Mr. McCaulay has satisfied the USPTO in the past, so it is difficult to say his most recent filings are in bad faith as well. The Washington NFL Team can still file a trademark application for one of the names Mr. McCaulay has already filed. However, this would result in them being hit with a notice of suspension, meaning they would have to wait until the pending application that was filed before them, with the similar or identical term, receives a ruling from the USPTO. This is concerning for Washington, as the application process for a trademark typically takes, if there are no hiccups along the way, between six and eight months (i.e. after the 2020 NFL regular season). 

Another route the Washington NFL Team can pursue is to obtain an assignment of an already registered trademark. This would involve the Washington NFL Team paying the holder of the registered mark (e.g. McCaulay) to transfer their ownership rights. Moreover, if you visited his site, which I really hope you did, he has stated he would sign any papers the team wants him to sign, because he does not want to be an obstacle to the team changing their name. However, according to McCaulay, his letters to the Washington NFL Team have not been met with a response just yet. Apparently all that McCaulay is asking for is that the team make a donation to the American Indian Graduate Center to pay for college scholarships for Native Americans, as well as a donation to the Defenders of Wildlife and the Wolf Conservation Center for red wolf recovery efforts. Reading between the lines, McCaulay really wants the Washington NFL Team to go with Redwolves for their brand. 

Arkansas State has entered the chat. Arkansas State University has held the trademark for “Red Wolves” since 2008.  Arkansas Democrat-Gazette’s George Stoia has reported that, similar to their potential situation with McCaulay, the Washington NFL Team has not reached out to the University regarding the name. Getting into contact with the university, according to well renowned sports law attorney Darren Heitner, is the first logical step for the Washington NFL Team if they are interested in using Red Wolves for their rebrand. Heitner told Stoia, “I’d be hard pressed to think that the Washington NFL team, with all of its lawyers of experience, would just move forward with Red Wolves without at least venturing to reach out to Arkansas State and try to reach a co-existence agreement.” As the name suggests, a co-existence agreement is entered into by two parties in order for them to use two similar trademarks concurrently. Heitner’s assertion that reaching out to Arkansas State before moving forward with the Red Wolves, if that ends up being the name the Washington NFL Team wants, is supported by the University’s willingness to defend their trademark in the past – back in 2018 the University of Tennessee at Chattanooga filed to register the mark Red Wolves. Three months later, Arkansas State University sent Chattanooga a cease-and-desist letter. Their jury trial is set to kick off in October of next year. 

Whatever name the Washington NFL Team does decide to go with, it is going to be long road ahead before they have the trademark protection they desire with their new name. It will be interesting to see which route they prefer: a co-existence agreement, an assignment of rights, or to challenge the validity of another’s trademark. Regardless of their choice, let’s hope this new name truly marks the start of a new era for the Washington NFL Team, as one is desperately needed in every imaginable way.

by Sean Fener, Rutgers Law School

follow Sean on Twitter @SN00P_

follow Corner Three on Twitter @corner3sports

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