NFL Washington Football Team’s Trademark Bids Rebuffed (1)

A trademark examiner refused to register “Washington Football Team” trademarks because they combine a geographic descriptor with a generic term, and because something similar is already registered.

The NFL team went by “Washington Football Team” last year and intends to again next season. In July, it applied for a word mark and two stylized burgundy word marks. The U.S. Patent and Trademark June 18 refused to register all three.

In addition to being geographically descriptive, the mark also created a likelihood of consumer confusion with an earlier application for “Washington Football Club,” the PTO said in a non-final refusal. Pro Football Inc., which runs the team, can attempt to modify its applications and resubmit to the agency.

The inability to register all three Pro Football Inc. applications for marks to cover team apparel and entertainment services would make it difficult to stop others from selling Washington Football Team hats, T-shirts and other merchandise. Registration means a presumption that an entity owns the mark nationwide and that an alleged infringer would have to prove otherwise if its mark use created a likelihood of consumer confusion about who sold a product.

But the refusal isn’t the bad news it may seem to be, trademark attorney Josh Gerben of Gerben Perrott PLLC said. The owner of the “Washington Football Club” mark has said he’d be willing to give the team the mark in the press, Gerben said. It should be easy for an NFL team to establish that the marks have become distinctive to consumers, which would allow a descriptive marks to be registered, Gerben said.

“If they want to use this as a long-term solution, I’d actually be happy with this examination,” Gerben said. “They would have very little to worry about. This might embolden me to do it.”

The agency didn’t bar registration on the supplemental register. Supplemental registration doesn’t create a presumption of ownership, but establishes a priority date, and can be moved to the principal register if consumers come to associate the mark on the whole with a particular producer.

Trademarks with a geographic descriptor before a generic term are generally considered conceptually weak with thin protection. But such marks can become “phenomenally strong” over time, trademark attorney Catherine M.C.Farrelly of Frankfurt Kurnit Klein & Selz PC said, citing American Airlines as an example.

“I would think they’d acquire distinctiveness more quickly than an ordinary consumer brand” given the broad reach of attendance and television broadcasts of NFL games, she said.

Multiple Grounds for Refusal

The team filed for the trademarks last summer as it approached its first year with a new name since the franchise, established in Boston in 1932, moved to Washington in 1937. One of the stylized marks is for “Washington Football Team, Est. 1932,” with “Washington” a much larger font over the rest of the words.

Gerben called it “very odd” that it took the PTO nearly a full year to complete an initial examination that usually takes 4-5 months. But the delay also gave the team time to accrue evidence of “secondary meaning,” or distinctiveness, to consumers that can overcome a descrpitiveness finding.

Generic marks that merely name a product can’t be registered. Adding a widely recognized geographic term that primarily tells consumers where the product originates can’t make the mark registrable. But if the mark, as a whole, has secondary meaning to consumers, it could be registered with rights to either term alone disclaimed.

But to get registered even on the supplemental register the team will have to either acquire or convince the PTO invalidate the “football club” mark, Gerben said.

That mark is registered on the supplemental register by an Alexandria, Va., resident, Philip Martin McCaulay, through his Washington Warriors LLC. To cancel the mark the team would have to show that McCaulay wasn’t using the trademark as his application claims.

McCaulay filed several different trademark applications for possible names as the team dealt with public pressure to change its name from the Redskins. If McCaulay didn’t want to make it easy for the team, the team “might do well to look at his evidence of use” to see if he was really using the mark in commerce as required, Farrelly said.