This much is known: the Washington Redskins’ name and logo are on the way out. Under pressure from sponsors amid the social justice movement sweeping America, the Redskins announced on Monday they’ll retire their controversial brand.
The guessing game for what comes next has begun.
Redtails. Redhawks. Warriors. Hogs. Skins. Federals. Senators. Bravehearts. Americans. They’re among suggested names that have gained traction on social media. The team, which Sportico reports was contemplating a name change even before sponsors threatened to cut ties, might propose something altogether different.
The team’s strategy on replacement branding is not entirely in the hands of owner Daniel Snyder. Several individuals have used the federal trademark process to make claims to names that might interest him.
Snyder is familiar with this hurdle. The legal controversy over his team’s name and logo predates him becoming owner in 1999. Seven years earlier, Suzan Shown Harjo and six others petitioned the U.S. Patent and Trademark Office. They demanded the teams’ marks be cancelled as disparaging to Native Americans.
The litigation would later involve other petitioners. It reached a key moment in June 2014 when the Trademark Trial and Appeal Board (TTAB) voted to cancel the marks.
Yet a month earlier—and without fanfare—a D.C.-area actuary named Martin McCaulay had applied to register “Bravehearts” and “Washington Bravehearts.” Later that year, he applied to register “Washington Redtails” (he would abandon that application in 2016). It would be the start of more than 40 applications by McCaulay for marks that concern potential replacement names.
McCaulay isn’t alone in using trademark law to enter the team’s orbit. In February, Deron Hogans and Thaniel Van Amerongen applied to register “Washington Redtails.” Hogans and Van Amerongen are reportedly employees of Deloitte. An examining attorney for the PTO has favorably reviewed their application and, on June 23, published the mark for opposition. This means there are 30 days for objectors—those who contend their business interests would be harmed by registration—to file objections. A familiar name already objects: McCaulay, who has filed a new application for Washington Redtails. The “McCaulay v. Hogans & Van Amerongen” battle is now under review by TTAB.
McCaulay. Hogans. Van Amerongen. Who are these people, you might ask? They are strangers to the team and yet are potentially central figures in the team’s renaming.
The team’s lack of full control over its renaming might seem ironic. It was only three years ago when the U.S. Supreme Court held that the Lanham Act’s disparagement clause—which authorized the PTO to cancel the team’s marks—was unconstitutional. The ruling ensured the Redskins could continue to use their name and logo with the full protection of law. It was a decisive win for Snyder.
A lot can change in three years.
The team will certainly seek registration for a replacement brand. Registration would provide essential protections, including: the exclusive right to use new marks in connection with games, apparel and merchandise; a presumption of ownership (which would make it harder for others to claim rights); the chance to obtain treble monetary damages against infringing parties; and protections from the U.S. Customs and Border Protection on curbing counterfeit goods—a significant worry for any NFL team. The team also wants assurance it is not infringing on another’s mark.
For Snyder’s team to advance in the process, a mark must be used in commerce or there must be a bonafide intent to use it in commerce. Some trademark applicants are derisively called “trolls”—those who seek to register marks and squat on them. Trolls can demand licensing payments from legitimate parties or threaten to sue them for infringement.
Back to McCaulay. He has retained noted sports and intellectual property attorney Darren Heitner, who has represented Antonio Brown and other pro athletes in legal matters. Also, McCaulay has published several tweets insisting that his trademark activities have been above board.
I never applied for a registration without a bona fide intent to use the product. Every time an application was approved, I used that product in commerce.
— Martin McCaulay (@MartinMcCaulay) July 14, 2020
He also pledges that he would relinquish the marks, for free, if the NFL asked:
@NFL @nflcommish Take my trademarks please! You can put that in all caps. I sent you and email on 7/4/2020 and said you can have them all for free. Are you waiting for me to offer to pay you to take them off my hands? #ChangeTheName #TheTimeIsNow #NotYourMascot
— Martin McCaulay (@MartinMcCaulay) July 13, 2020
So, what will happen if the Redskins tried to move forward using a trademark that McCaulay has already applied to register without either getting the mark assigned or getting McCaulay to abandon it?
Alexandra Roberts, a trademark law expert at UNH Franklin Pierce School of Law and author of Athlete Trademarks: Names, Nicknames, & Catchphrases, tells Sportico there are no sure outcomes in such a situation. Multiple factors would be involved.
She notes that McCaulay has applied for dozens of marks that might be of interest to the team. The level of protection accorded to each varies depending in part on how McCaulay has used them.
“Trademark rights in the U.S.,” Roberts stresses, “are based on use.”
“If we’re talking about one of McCaulay’s use-based applications, like his application to register Washington Redtails for cups, wine glasses, & mugs, then we have to ask whether he uses Washington Redtails as a trademark rather than just plastering it on the front of some mugs in a decorative way. He’s also required to use the mark in interstate commerce, which means not just offering the products for sale but actually selling them.” She adds, “based on his website, it doesn’t look like he’s sold any mugs yet.”
Even if the PTO finds his application acceptable, Roberts emphasizes that doesn’t necessarily preclude the Redskins from obtaining the mark. “There are many bases on which the team could challenge an application.” Likewise, registration could occur “in a very different class from professional football”—such as mugs and wineglasses—in which case “the PTO could easily determine there’s no conflict with the football team using the mark.” Why? Because there would not be a likelihood of confusion among consumers.
Roberts surmises that “it seems fairly unlikely that an application like [the one for Redtails] could result in Mr. McCaulay keeping the team from using” the name. However, she warns “this kind of application has holdup value.” It can “slow down the process for the team because the PTO needs to deal with that application first given . . . McCaulay filed first, and the marks are identical even though they cover different goods/services.”
She also highlights that many of McCaulay’s applications are based on an intent to use in the future. He has three years to show a bona fide intent to use, “which means he could theoretically keep the Washington team in limbo for three full years given some of these applications were just filed last week.” If he filed without a real intent to use the marks, but only extort the team, “that would be considered fraud on the PTO.” However, Roberts emphasizes that it’s a “high bar” to prove fraud and the team “doesn’t have the time.”
To be clear, McCaulay publicly insists that he would turn over his marks, for free, if the team only asked. Roberts questions whether there is an actual trademark dispute between the team and McCaulay. “He keeps reiterating to reporters he hasn’t heard a word from the team.”
Pamela Deese, an intellectual property transactions attorney partner at Arent Fox in Washington D.C., explains that there would be several vehicles through which the team could attempt to obtain a valid, registered mark from McCaulay or from others.
If McCaulay (as noted above) has registered marks rather than simply filed applications the team could attempt to acquire them through a license or assignment. One means for a well-known prospective buyer to proceed is through a third party. “The team could hire a third-party to negotiate a purchase of the registered trademark from McCaulay without disclosing their client,” Deese notes. “Third parties are used to keep the identity and strategies of the prospective buyer confidential so that the seller doesn’t attempt to escalate the price unreasonably or obtain market knowledge that could be advantageous.”