“Rebranding from a long established, famous, trade identity to a completely new one is no simple matter, in the best case scenario. In the normal circumstance, branding experts would be consulted, potential names would be tested, and with something like a beloved home sports team, fan participation in the naming process to generate excitement might be in order.”
Update: On July 23, the team announced it will go by the name, “Washington Football Team” through the 2020 season. Per the team’s statement: “The decision to use ‘Washington Football Team’ for this season allows the franchise the ability to undertake an in-depth branding process.”
After decades of legal battles in which they ultimately succeeded in maintaining the legal right to federal trademark registration of the “REDSKINS” moniker—through the separate efforts of an Asian band by the name of “The Slants”—Washington, D.C.’s National Football League (NFL) team finally succumbed to pressure to change their name. Faced with the immediate prospect of losing $45 million from a stadium naming rights deal with Federal Express, on July 13, 2020, the team announced it would have a new name and logo. Still to come: the new name and logo.
Against the Clock
Purportedly, the process began in earnest on July 3, when the team announced that it was going to “review” the team name. Even assuming the decision to change the name had been made by then, with a September 10, 2020 start date for the NFL season, that is awfully short notice to implement a complete brand change.
Rebranding from a long established, famous, trade identity to a completely new one is no simple matter, in the best case scenario. In the normal circumstance, branding experts would be consulted, potential names would be tested, and with something like a beloved home sports team, fan participation in the naming process to generate excitement might be in order. Importantly, though, with so much of the business of an NFL team riding on merchandising, licensing and sponsorship fees, careful vetting of a new name and logo would be a must to assure, as best as possible, that the team will be able broadly to enforce, and defend, the legal rights in its new marks.
Starting the Search
This usual first step for any prudent business about to embark upon a significant investment in a new name or mark is a trademark search. The ability to obtain a U.S. trademark registration is important not only to provide legal confirmation and enforceability of nationwide trademark rights; it also may be recorded with U.S. Customs, who will do the yeoman’s work of stopping counterfeits at the border. The search should help determine whether the mark or marks under consideration are even available for registration, in terms of what is already on the federal register. But because in the U.S. trademark rights can be obtained only through use of a mark, without federal registration, any clearance search must be much more exhaustive, including state trademark registers, business names, domain names, social media, internet, etc. A mark which will be widely merchandised requires an even more all-encompassing search.
Further complicating matters is the fact that the NFL now is very much a worldwide business. Therefore, trademark protection, and thus these trademark searches and review, must be undertaken on a worldwide, or at least major market, basis.
Unless a new mark is a coined term (like Xerox) or completely arbitrary (such as Apple for computers), clearing the mark worldwide can be a daunting undertaking with no pressing time constraints. Often, search results are somewhat inconclusive and require further investigations. iPhone and Uber are just two examples of high profile marks whose owners found themselves defending the right to use or register in the United States well after their introduction into the market.
Once the new mark is selected and cleared, applications for registration—again, essentially worldwide—must be filed. Optimally, to try and forestall interlopers from anticipatory, potentially shakedown filings, the high profile trademark owner would want to file its U.S. applications before announcing the new name and logo. However, U.S. applications become publicly available online within 4-5 days after filing. Therefore, the trademark owner would like to get its applications on file in the United States in this window of less than four days before the official announcement.
Timing is important for trademark registration filings in other countries, as well. Many countries are “first to file” jurisdictions. Other countries have an unsavory reputation for “blocking” filings for famous marks. Through the Paris convention trademark treaty, however, filings in most countries made within six months of the date of the U.S. filing will be accorded a priority date of the U.S. application filing date. This includes applications for an International Registration and requests for extension of protection of an International Registration into any participating countries, which also must be filed within six months to obtain the benefit of the U.S. priority filing date. The six-month priority period does leave a bit of breathing room for subsequent filings outside the United States.
Soon to Be Seen
Of course, this hyper compressed timetable assumes that the Washington team was starting from scratch on July 3. Team owner Daniel Snyder is famous for previously declaring the team would NEVER (all caps his) change the Redskins name and logo. But Snyder is nothing if not a savvy businessman. Who knows? Much of this rebranding preparation and investigation could have been in the works for some time. New coach Ron Rivera has hinted as much. We’ll see.
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