Monday, August 3, 2020

What’s in a Name?

The NFL team formerly known as the “Washington Redskins” recently announced that it would play the 20
20 season as the “Washington Football Team.”

After years of defending the “Redskins” name against claims that the mark was racially insensitive, and vowing to “never” change the name, the team owner reversed his steadfast position after the death of George Floyd in late May, when FedEx threatened to cancel its remaining payment obligations under its stadium naming rights contract if a change was not made. 

Given the timing of the decision, it shouldn’t be surprising that the team wants more time to select a new name. A name change of any kind is a big deal, but even more so with a professional sports team.

Teams often want the name to reflect something about the city or state that they represent (Pittsburgh Steelers, Green Bay Packers, Minnesota Vikings), but may want to consider broader appeal if the name is to have value for a possible move or sale to another location (although that didn’t seem to prevent the New Orleans Jazz from becoming the Utah Jazz or the Minneapolis Lakers becoming the Los Angeles Lakers—even though Utah isn’t known for its jazz scene and there aren’t really any lakes in LA…). Fans appreciate a name that suggests strength or bravery (Pirates/Buccaneers, Lions, Bears), but want something unique that isn’t used by a half dozen high schools and colleges in every state (Eagles, Cardinals, Tigers, Wildcats). True fans of the team will remain loyal regardless of the name, but let’s face it, an interesting name and cool logo can’t hurt sponsorship revenue and merchandise sales. 

On the other hand, considering the lengthy controversy over the name, one would think that the team might have had something on the shelf. 

Pro-Football, Inc. is the owner of the Washington Football Team. Founded in 1932 as the Boston Braves, the team was renamed the Boston Redskins in 1933, probably to avoid using the same name as Boston’s professional baseball team. In 1967, the team was issued its first U.S. trademark registration for its name, and went on to obtain additional registrations during the 1970’s including one for its logo of a Native American warrior. In 1990, the team was issued a registration for THE REDSKINETTES used for its cheerleading squad (which had at least stopped wearing black-braided wigs nearly 20 years prior to this registration). These registrations were granted in spite of long-standing trademark law barring the federal registration of “disparaging,” “scandalous,” and “immoral” marks. 

However, only two years after registering THE REDSKINETTES, a new application to register WASHINGTON REDSKINS for clothing and other merchandise was refused by the USPTO on grounds that the mark was disparaging of Native Americans. The USPTO’s refusal was issued on the heels of a petition filed by a group of Native Americans challenging the team’s existing registrations on grounds of disparagement. While this matter dragged on, a second group of Native Americans filed a petition to cancel the team’s registrations in 2006, which was put on hold pending a final decision regarding the prior 1992 petition which was now dragging through the federal court system. Finally, in 2009, after losing on appeal, the petitioners/plaintiffs on the first action were declined review by the Supreme Court. 

In 2014, the Trademark Trial and Appeal Board (TTAB), acting on the second (2006) petition ordered the cancellation of the Pro Football, Inc.’s six existing registrations (the 1992 application for a seventh registration was suspended pending these court/administrative proceedings). The TTAB decision was upheld by the federal district court, but was on appeal when in 2017 the U.S. Supreme Court, in an unrelated case (Matal v. Tam, regarding registration of the mark THE SLANTS for a rock band), ruled that the “disparaging” clause violated free speech protected by the First Amendment and was therefore unconstitutional. With the Supreme Court ruling, the basis for the challenge to the Washington Redskins trademark registrations was gone, the registrations were reinstated, and the last application filed in 1992 was issued a registration in 2018.  

After more than 25 years of dispute, the team declared victory, but in an ironic twist, it was soon to find out that the mere right to register their marks would not make the public view the marks as any less disparaging. 

It is important to note that the Tam case, which determined disparaging marks were free speech and not to be denied trademark registration, did not address “scandalous” or “immoral” marks. That issue was addressed by the Supreme Court last year (Iancu v. Brunetti,, regarding registration of the mark FUCT – for “Friends U Can Trust” – for a clothing line). Not surprisingly, the Supreme Court followed its Tam decision and held that refusing registration of marks on grounds that they were scandalous or immoral would also violate First Amendment free speech. 
Out of curiosity, I did some non-scientific research in the USPTO records and could not discern any noticeable increase in applications for “disparaging” marks following the Tam decision, but there are more than a few recent applications that would clearly have once been considered “scandalous” or “immoral.” While it may be difficult to identify what may be disparaging, I thought a good start for scandalous marks would be George Carlin’s “Seven Words You Can Never Say on Television.”   All of these words can now be said on cable, and some are even reasonably common on network stations, but it is still surprising to see that they are being considered for brands.

If you think about doing your own research, I recommend you stick to the USPTO records. If you do a general browser search, you will plant cookies that attract ads you do not want to see.

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