Washington Football Team Trademark Attempt Hits Latest Snafu
Scott Taetsch/Getty Images. Pictured: Washington Football Team logo.
The Washington Football Team was sacked by the U.S. Patent and Trademark Office on Friday.
The government office issued a refusal of the team’s attempt to trademark the name on clothing. The office made the decision based on the likelihood of confusion with a man who successfully trademarked Washington Football Club for clothing and the fact that the name alone is geographically descriptive.
On July 13, 2020, the team changed its name to the Washington Football Team after criticism that the Redskins name was unfair to Native Americans.
While the team changed its name, it encountered an issue when it filed to trademark it for clothing. Sensing that owner Daniel Snyder would one day finally buckle, in 2014, a Virginia realtor named Phillip McCauley filed to trademark every name imaginable and made and sold clothing in 2015 to satisfy use in commerce provisions. McCauley was awarded the trademarks in May 2015, including one for Washington Football Club.
“Mr. McCaulay is aware that the Washington Football Team trademark applications received non-final office actions with refusals for, among other things, a likelihood of confusion with Mr. McCaulay’s registered trademark for Washington Football Club that he previously renewed,” said his attorney Darren Heitner of Heitner Legal.
“As we have told the team in the past, Mr. McCaulay is willing to discuss assigning his valuable registration,” Heitner continued.
So what moves does Washington have left?
“The first step here would be to try to negotiate with the owner of the blocking registration,” Josh Gerben, a trademark attorney in Washington D.C., said. “If the team can get something worked out with him, that would likely be the cleanest and quickest way to work around the refusal.”
But Gerben said if they can’t, they can make the argument that McCauley obtained the trademark on fraudulent grounds and encourage the USPTO to cancel his mark. It might not be too hard to show that McCauley filed to trademark the names in response to the Redskins tension and solely because of that. And Gerben says, beyond the initial registration and selling of gear, there might be a question as to whether McCauley has a substantive business, which obviously pales in comparison to the team’s merchandise sales.
“As for the geographically descriptive portion of the refusal,” Gerben said, “I anticipate the team could provide enough evidence to the USPTO to overcome this issue. They just have to prove the name has become well known in the marketplace.”
The NFL team isn’t new to facing opposition from the government office. In 2014, the USPTO canceled the trademark to the name Washington Redskins on grounds that its team name and logo were disparaging. The team caught a break when, a year later, the Supreme Court heard a similar case and ruled that the disparagement clause violated free speech clause in the First Amendment.