Trademark Trolls Circling Redskins Unlikely to See Big Pay Day

Jaburg Wilk

Jaburg Wilk

For decades, the Washington Redskins’ name has been the center of controversy, both in federal court and in the court of public opinion. Native American groups have long decried the name as a racial slur and have challenged the name in court and in the media. Until recently, the NFL team stood firm in its defense of the name. In the wake of mass protests against institutional racism following the murder of George Floyd (and an onslaught of pressure from team sponsors), the Redskins’ ownership announced it would finally change the team’s controversial name.

For as long as the controversy has made headlines, the public has been prospecting names for the team. Front runners have included the Redtails (a reference to the red tail of planes flown by the all-Black Tuskegee Airmen in World War II), the Warriors, the Redhawks, the Skins (in reference to pigskin), the Generals, the Senators (notably, the name of the D.C.-area’s first major league baseball team that eventually became the Minnesota Twins), the Veterans, the Monuments/Memorials, and the Federals.

Enterprising fans have long sought ways to profit from what many believed was an inevitable name change. Among those efforts, numerous parties have sought to register the trademarks for names they predicted might be chosen. By securing the relevant trademark rights ahead of the team, the thinking goes, the registrant can stand in the team’s way and demand a toll to pass. Several recent media reports have highlighted these schemes, including amused commentary that the once obdurate team ownership will have to pay up now that it finally came around to changing the name. But would such a shakedown scheme actually work? The short answer is no.

Trademark rights arise from use of a mark in commerce. If a domestic mark is not used in commerce, there are no trademark rights and the mark cannot be registered. While an applicant can file to register a mark on an intent-to-use basis, the mark may only achieve registration once it is actually used in commerce. And an intent-to-use application requires a bona fide intent to use the mark. Racing to the Trademark Office to exploit another’s intent to use a mark is not a bona fide intent to use the mark.

In fact, when the Los Angeles Rams moved to St. Louis in the mid-1990s, a trademark troll quickly applied for “St. Louis Rams” before the team could file its own application. The federal court ultimately ruled against the trademark troll, finding it lacked a bona fide intent to use the mark in commerce and that the public already associated the name with the team due to its known plans to relocate to St. Louis.

With working knowledge of trademark law, some of these aspiring trademark trolls have attempted an end-run around the law and successfully registered prophesied team names by selling goods (e.g., mugs and t-shirts) emblazoned with the names—in an effort to demonstrate use of the mark in commerce. But this trick will also likely fall flat. The Lanham Act defines “use in commerce” as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” The circumstantial evidence strongly suggests these trolls registered the marks and may have made a few token sales for the mere purpose of reserving rights in the mark. In fact, some of the aspiring trolls have readily acknowledged their plans. But such use does not adequately satisfy the use-in-commerce requirement.

The merits of the law strongly favor the team. The trademark trolls will undoubtedly struggle to demonstrate use of the mark in commerce or a bona fide intent to use the mark in commerce. Due to wide public speculation of the anticipated name, the public already associates many of the front-runner names with the team. Thus, the Redskins’ ownership will most likely prevail if it challenges a troll for its new name. That is not to say the team won’t find it more practical to pay some nominal nuisance value to avoid the delay and corresponding cost of having its bruiser attorneys pound the troll into the ground—indeed, the trolls are banking on this “Hail Mary.” But professional sports teams are known to fanatically protect their intellectual property. If that approach comes to bear here, the trolls can expect to find themselves back under a bridge with nothing to show for their efforts.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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