“While there are benefits to being first in line at the Trademark Office, and filing intent to use applications can be a good business strategy, an applicant must have objective evidence of its bona fide intent to use the mark or risk walking away empty-handed.”
As reported here, Washington, D.C.’s professional football team – which announced on July 23 that it will go by the name “Washington Football Team” through the 2020 season – recently decided to retire the “Redskins” name and logo.
In surveys throughout the Washington, D.C. metro area, three possible replacement names have emerged as favorites among the fans: Warriors, Red Wolves, and Redtails. Armed with the knowledge of the name change and the relative popularity of the possible replacement names, two enterprising individuals have applied to obtain a federal trademark registration for the marks WARRIORS, WASHINGTON RED WOLVES, and WASHINGTON REDTAILS, respectively. Neither applicant appears to be connected to the owners of the Washington D.C. professional football team.
The Applicants in the Lead
U.S. application serial no. 90-041597 is for the mark WARRIORS for use with “organisation of sports events in the field of football.” The application was filed July 8, 2020, based on the applicant’s bona fide intent to use the mark in the future in connection with the services in the application.
U.S. application serial no. 90-042499 is for the mark WASHINGTON RED WOLVES for use with “entertainment in the nature of football games.” This application also was filed July 8, 2020, based on the applicant’s bona fide intent to use the mark in the future in connection with the services in the application.
U.S. application serial no. 90-036248 is for the mark WASHINGTON REDTAILS for use with “entertainment in the nature of football games.” This application was filed July 5, 2020, based on the applicant’s bona fide intent to use the mark in the future in connection with the services in the application.
Being first to the U.S. Patent and Trademark Office (USPTO) begs the question: so what? Do the applicants of the possible new team names have the right to prevent others, namely, the Washington, D.C. professional football team, from using the names? Do the applicants have leverage to demand a payday from the football team to acquire the names and/or the applications? The answers to these questions likely will depend on the applicants’ intent at the time they filed the applications.
The test for trademark infringement is “likelihood of confusion.” A successful plaintiff must prove (1) priority of use, and (2) that consumers are likely to be confused as to the source or origin of the parties’ goods or services, i.e., to mistake one for the other, or to mistakenly believe that one party is affiliated with or sponsored or endorsed by the other.
In the present scenario regarding the new team names, the issue will be priority of use. Trademark rights are acquired through use of a mark in commerce. A trademark symbolizes the goodwill of the owner of the mark. Goodwill is established through commercial activity; thus, there can be no trademark rights absent commercial activity and corresponding goodwill. The first party to use a mark in commerce, referred to as the “senior user,” establishes common law trademark rights in the mark in the geographic where the senior user has priority of use. The senior user has superior trademark rights in the geographic area where the senior user has priority of use.
While a federal registration does not confer trademark rights upon a registrant, registration can expand the geographic scope of common law trademark rights established through commercial use of a mark. A federal registration does not, however, supersede a senior user’s common law rights. In a scenario where there is a senior user with common law rights and a junior registrant with a federal registration, the senior user would be able to continue to use its mark in the geographic area where it has priority, and the junior registrant would be presumed to have exclusive trademark rights throughout the remainder of the country.
It’s All About Intent
Another benefit of a federal registration, which likely is more relevant in the present case, is that the application filing date is the constructive first date for the purpose of determining priority. Prior to 1988, U.S. trademark law required an applicant to make commercial use of a mark prior to filing an application for a federal registration. The Trademark Law Revision Act of 1988 allowed applicants to file an application based not on actual use of the mark in commerce, but on the applicant’s intent to use the mark commercially in the future. To complete the registration process, an applicant still must prove commercial use of the mark, but the actual commercial use may not commence until years after the application filing date. Regardless, the constructive first date reverts back to the application filing date. This can confer a significant benefit on applicants of intent to use applications. To counterbalance the benefit, the law requires objective evidence of a bona fide intent to use the mark at the time of filing the application. In other words, an applicant cannot simply reserve trademark rights in a name, which brings us to the present situation.
Applicants have filed intent to use applications for the marks WARRIORS, WASHINGTON RED WOLVES, and WASHINGTON REDTAILS for use with “organisation of sports events in the field of football” and “entertainment in the nature of football games,” respectively. The Trademark Trial and Appeal Board has held, and the U.S. Court of Appeals for the Federal Circuit has affirmed, that “whether an applicant had a ‘bona fide intent’ to use the mark in commerce at the time of filing the application requires objective evidence of intent.” M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1376 (Fed. Cir. 2015).
The court went on to explain that “[a]lthough the evidentiary bar is not high, the circumstances must indicate that the applicant’s intent to use the mark was firm and not merely intent to reserve a right in the mark.” Lack of bona fide intent thus is an available ground for opposing an application or petitioning to cancel a registration, and importantly “[t]he requirements for pleading and proving a lack of a bona fide intent to use a mark do not equate to the requirements for pleading and proving fraud.” SmithKline Beecham Corp. v. Omnisource DDS LLS, 97 USPQ2d 1300, 1305 (TTAB 2010). If the applicants are unable to complete the registration process, then they will not receive the benefit of having their constructive first use dates revert back to the application filing dates and the applicants will have to rely on their actual use in commerce to establish their priority dates.
Ultimately, a Bad Play
In addition to requiring a bona fide intent to use at the time of filing the application, intent to use applications have an additional fail safe to prevent abuse. An intent to use application cannot be assigned before the applicant establishes use of the mark in commerce, except to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing. TMEP § 501.01(a). The applications for the possible new team names therefore cannot be assigned prior to the marks being used in commerce. Any such assignment would render the assigned application void. The primary purpose of this provision is to ensure that a mark may be assigned only with the goodwill of the business, which the mark is intended to represent, and to prevent trafficking in trademarks. This is analogous to the purpose of the Anticybersquatting Consumer Protection Act, which was enacted in 1999 to prevent parties from registering domain names to which they have no legal right and holding the domain names hostage pending payment by those with a rightful interest in the domain name.
While there are benefits to being first in line at the USPTO, and filing intent to use applications can be a good business strategy, an applicant must have objective evidence of its bona fide intent to use the mark or risk walking away empty-handed. In the present case, the applicants have intent to use applications for new team names, which are subject to opposition absent objective evidence of intent to use at the time of filing, and which cannot be assigned until the marks have been used. Sometimes, there are more important things than being first.