Last week, we wrote about the pending name change for the Washington Redskins. On Monday, Washington ownership formally announced the retirement of the team’s nickname. Public opinion prevailed, and Washington’s owner, Dan Snyder, finally decided to move away from the offensive team name. However, the team hit a hitch that prohibited the reveal of the changed name. Citing to ongoing trademark battles, the team felt uncomfortable sharing the new direction before making the team name rebrand public and official.
Much public speculation occurred over the previous week regarding the potential new team nickname. A number of new trademark applications for professional sports entertainment services started popping up in June. Upon a review of the USPTO trademark database, many of these applications belong to a single individual – Philip McCaulay, a realtor from the DC area. McCaulay filed the trademark applications as intent-to-use applications, complicating the team name rebrand.
McCauley’s Intent-to-Use Trademark Applications vs. Team Name Rebrand
To file an intent-to-use trademark application, a trademark owner must have a bona fide intention to actually use the mark in commerce. In addition, a trademark owner must sign a declaration stating, under possible jail sentences, a bona fide intent to use a particular name. As such, trademark applications cannot be filed to simply block others from obtaining trademark protection. In addition, trademark applicants must show use of the mark in commerce prior to receiving a full trademark registration. Intent-to-use trademark applications provide a three-year window (with extensions) to show use. If a trademark owner is willing to risk the penalties for signing a false declaration, the trademark application can become a marketable asset of sorts. Congress likely didn’t intend that intent-to-use trademark applications be used as negotiation tools; however, under the current law, there is no mechanism to prevent such filings from occurring.
Back to the sports world, a similar trademark situation occurred when the Vegas Golden Knights entered the NHL. Vegas’s ownership filed multiple intent-to-use trademark applications, publicly stating afterward that the tactic was to “hide the ball” (or puck) on the intended name of the team. However, such a tactic is improper under trademark laws. Washington does not appear to intend to do this; instead, Washington must work within the current trademark laws to rebrand the team name as quickly as possible. And that might mean negotiating with McCaulay.