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New Name for Washington NFL Team Hinges on Trademark Rights (2)

July 7, 2020, 10:02 AMUpdated: July 9, 2020, 7:28 PM

The Washington NFL football team’s ability to lock down trademark rights to a new moniker quickly and effectively will be a major factor in any name change.

The team announced a “thorough review” after sponsors including FedEx Corp., Nike Inc., Walmart, Inc. and PepsiCo Inc. began exerting pressure over continued use of “Redskins,” seen as a disparaging term for American Indians.

The team did not immediately respond to a request for comment. But trademark attorneys said the organization is likely scouring the federal trademark registry and other sources for potential conflicts, and it likely will try to avoid a legal battle over the name it wants.

The team would also have to see if anyone might claim common law rights—rights from usage of trademarks that aren’t registered—or whether it would have to acquire an existing internet domain name. Upon finding a conflict, the team would send feelers to see if it could either purchase rights easily or enter into a coexistence agreement, attorneys said.

If the team makes the change, it faces a minefield of trademark squatters who have attempted to register trademarks on possible choices.

Most who seek trademark registrations probably think the team will pay millions for the one they want, but the organization could move on to another idea if a rightsholder plays hardball, trademark attorney Josh Gerben of Gerben Law Firm said.

“If there’s no underlying equity, the value is in the eye of the beholder,” Gerben said. “They may be willing to spend a little bit. But if someone filed a trademark application for a shirt brand, I’d be very surprised if you see something north of a couple hundred thousand.”

A lawsuit against the team trying to get trademarks on its current name canceled as disparaging was derailed in 2017 when the Supreme Court ruled in a different case that the government can’t deny a trademark on such grounds.

But the new pressure from sponsors is a “game-changer,” sports law attorney Edward Schauder of Phillips Nizer LLP said. FedEx, which pays for naming rights to the team’s stadium, threatened to end that relationship if the name isn’t changed. PepsiCo said it’s been in discussions with the team about the issue for weeks, and Nike and WalMart have already pulled the team’s gear from their online stores.

“If sponsors are going to start exerting pressure on the teams, that’s a whole different ballgame. Dan Snyder is giving it serious thought; to my mind that means they’re going to do it,” Schauder said, referring to the team’s owner.

The team said it would seek input in its review from alumni, sponsors, the NFL and the Washington community.

Due Diligence

Schauder said the switch “could be quick.” He said the name will likely be something completely new. It “doesn’t make sense” to just change it and not running it by sponsors, making suggestions of keeping native imagery with a name like the Warriors unlikely, he said. Though they may keep the colors and other types of “trade dress” type elements like font and uniform design.

Some established trademark owners may be open to a coexistence agreement where multiple parties consent to using potentially legally conflicting marks, often with specific provisions designed to prevent consumer confusion, attorneys said.

The organization running The Harlem Globetrotters offered to sell or share the rights to the Washington Generals, the Globetrotters’ perennial opponent in the basketball showcases.

Other possible names may have existing pending or registered trademarks from less established owners. Washington RedTails—a nod to the nickname of a unit of the Tuskegee Airmen, a group of Black World War II military pilots—was applied for in February.

Gerben said the team may choose an entirely new name with no current rightsholder. The team could challenge a squatter’s trademark for nonuse at the Trademark Office, but starting a legal battle wouldn’t be practical, he said. Gerben also dismissed concerns, often raised by clients in other businesses, that “all the good names are taken.”

“I can tell you as someone who files for a thousand trademarks a year, not all the good names are taken,” Gerben said.

(July 7 story updated with additional reporting. Earlier update corrected quote in seventeenth paragraph.)

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editor responsible for this story: Keith Perine at kperine@bloomberglaw.com

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