On July 13, 2020, the era of the NFL’s Washington Redskins ended (following pressure from the public and from corporate sponsors) and a new era began. Unfortunately, it was – and remains – an unnamed era. The team is currently called “The Washington Football Team” – it’s better than “The Washington Insert Name Here” but not by much.
Why the delay in getting a new name? Part of it could be related to the issues discussed in our article a year ago. Over the years, trademark applications have been filed for dozens of potential replacement team names. To protect its interim name, the team (owned by Pro Football, Inc.) filed trademark applications for the term “Washington Football Team”, and two logos (“Washington Football Team” and “Washington Football Team, Est. 1932“).
All three of these applications have one thing in common: in June 2021, the USPTO issued office actions refusing the applications. One objection was that the terms were “primarily geographically descriptive”, meaning that they primarily associate a product or service with a specific location (i.e., Washington, D.C.). The trademark examiner cited caselaw stating that the purpose of this is “to leave geographic names free for all businesses operating in the same area to inform customers where their goods or services originate.” A second objection was that the terms were confusingly similar to an existing trademark registration for “Washington Football Club”, filed by Washington Warriors LLC and later assigned to Washington Redwolves LLC. Both of those companies are run by Philip Martin McCaulay, a man with dozens of registered trademarks that could be potential replacements for the “Washington Redskins” name. On July 4, 2020, he offered 20 of them to the NFL, for free, but as of now, the Washington Football Team doesn’t appear to have accepted his offer.
Is Mr. McCaulay a trademark squatter? Certainly not according to his lawyer, who pointed out that Mr. McCaulay isn’t seeking a payday for his trademarks. In an Answer filed recently with the Trademark Trial and Appeal Board (TTAB) in response to an opposition action by Arkansas State University regarding his “Washington Redwolves” and Washington Redwolves Professional Gridiron Football” trademark applications, Mr. McCaulay states that he “has run a profitable online retail business since the year 2006.” Mr. McCaulay has been involved in multiple matters before the TTAB and his experience shows. He drafted a thorough, detailed, and at times humorous explanation of his background and various trademarks, and also showed that the Arkansas State University’s logo is much more similar to the logo of the 336th Training Squadron located at Keesler Air Force Base or to other existing “red wolves” trademarks than to his own.
If the Washington Football Team doesn’t want to use one of Mr. McCaulay’s trademarks, they don’t have great options for their pending applications: they could certainly push forward, but it’s an uphill climb. They would either need to overcome the geographic identification issue (which seems unlikely) or settle for a place on the Supplemental Register, which lacks certain benefits of the Principal Register, including enabling the U.S. Customs office to bar the importing of infringing items. And the team has ruled out popular names, such as the “Warriors.”
The Washington Football Team isn’t the only team in this position. On July 23, 2021, the Cleveland Indians announced that they are rebranding as “The Cleveland Guardians.” This was two days after they apparently agreed to settle a TTAB opposition proceeding, clearing the path for the Cleveland Guardians’ application.
Apparently the Washington Football Team is watching the Cleveland Guardians’ rebranding, and moving slowly to avoid missteps, before unveiling a new name in 2022. If you have questions about your branding, don’t wait until it’s 4th and 26 – ask us. We’d be glad to help.
— Joshua D. Waterston, Esq.