Washington, D.C.'s NFL football team dropped the REDSKINS moniker, but the team's new name remains a mystery. If, for example, the names Americans, Veterans, Pandas, Monuments, Red Wolves, or Red Tails are on club owner's Daniel Snyder's short list, he will have to square off against Martin McCaulay. For many years, McCaulay has successfully registered dozens of potential team names with the U.S. Patent and Trademark Office. It appears gameday has finally arrived for McCaulay, but he may find himself out of bounds.
McCaulay is facing online backlash from fans who believe he is stiff-arming the team from selecting a fan-favorite new name. But regardless of how this online trash talk unfolds, McCaulay's trademark filings may get sacked for other reasons: McCaulay may not have been an eligible receiver and could be left without enforceable trademark rights. Let's go to the film.
Each of McCaulay's long list of trademark registrations may be vulnerable to cancellation or invalidity challenges on a variety of grounds. For example, the Lanham Act provides that trademark owners must make bona fide use of the mark in commerce.1 This requirement compels owners to have real, non-token sales of goods bearing each mark and such sales must occur in the normal course of business. Many of McCaulay's trademark filings indicate that he intends to use the marks not in connection with sporting events, but on various goods, like cups, mugs, wine glasses, and t-shirts. For example, in support of the application for Red-Tailed Hawks McCaulay submitted evidence that he was selling t-shirts featuring the mark “Washington Red-Tailed Hawks” through a custom printing web site. It is unclear if such sales were legitimate ongoing busines transactions, or just a temporary online posting. McCaulay also uses the Red-Tailed Hawks mark on what he calls an “informational website,” containing bare-bones information about football. But even if these uses are real, they may not be enough to win the game because the Lanham Act states that using a trademark just to reserve a right in that mark is not enough. Here, there is an argument that the uses are merely nominal and insufficient to meet the standards for bona fide use.
The registrations have another potential flaw, one that sometimes trips up even the most experienced of trademark filers: the way the marks are used may be considered merely ornamental. A word or design that serves only to decorate a product is not a trademark.2 Rather, to constitute a trademark, the word or design must identify the source of McCaulay's goods to consumers and distinguish them from other sources selling similar goods. For example, a trademark applicant was unsuccessful in its attempt to register the mark SUMO, as used in connection with stylized representations of sumo wrestlers on clothing, because the mark was merely an ornamental feature of the goods.3 Similarly, the USPTO refused registration of the mark ASTRO GODS because consumers would have simply perceived the wording as part of the thematic ornamentation of the applicant's clothing.4
To successfully avoid an ornamentation rejection, McCaulay would have to show that consumers identify him as the manufacturer or seller of the t-shirts bearing the mark. Typically, trademarks for clothing are found on sewn-in labels or tags identifying the manufacturer or designer. And trademarks for mugs and are usually placed on the bottom of the item. Designs on the clothing itself or on the side of a mug are usually aesthetic. Selling goods featuring the mark is not typically sufficient to create trademark rights if the mark is merely a decorative design.
Finally, Snyder may try to counter McCaulay's filing blitz by seeking to invalidate McCaulay's registrations under Section 2A of the Lanham Act. This statutory provision5 lost some teeth after the Supreme Court's 2017 decision Matal v. Tam,6 which held that the section's so-called “disparagement clause” unconstitutionally restricted free speech. But that decision left undisturbed the section's prohibition on the registration of marks which, among other things, falsely suggest a connection to some other party.
Specifically, the club's legal team may argue that any goods sold by McCaulay, and perhaps even the registrations themselves, were designed to falsely suggest that he was connected to the squad. The team would need to show that the mark, as used on the goods or services in question, pointed uniquely to the team. Trademark challengers have successfully made this argument before. For example, the famous British model Twiggy successfully cancelled the registration of the mark TWIGGY, which the applicant sought to use on children's clothing, because consumers would presume an association with her.7 To convert on this play, the team would need to show that consumers would immediately associate McCaulay's marks with the former Redskins—a task that may prove difficult, seeing as the team has not yet selected its new name.
Those watching McCaulay's story closely, including fans of both Washington football and trademark law, may find parallels to an infamous trademark “troll,” Leo Stoller. Calling himself an “intellectual property entrepreneur,” Stoller similarly “warehoused” a significant number of trademark registrations without having actual legitimate trademark usage in commerce. Rather, Stoller simply made token use in order to fraudulently obtain registrations for marks that he used to blackmail others. Stoller aggressively asserted his baseless trademark rights, threatening infringement actions against those attempting to use similar marks. Although Stoller successfully convinced some businesses into entering into trademark license agreements and paying royalties to him, this scheme eventually collapsed. Ultimately, Stoller was flagged for a personal foul and his fraudulent conduct led to federal court sanctions.8 Apparently not content to rest on his questionable laurels, on July 13, 2020 Stoller filed an application for the mark WASHINGTON REDSKINS for clothing (Appl. Serial No. 90050599). We predict an unsportsmanlike conduct penalty in his future.
So far, it appears that McCaulay is playing conservatively when it comes to asserting his trademark rights, waiting instead for Daniel Snyder and the Washington football team to reveal their strategy before taking a shot downfield. Whether McCaulay's trademarks will end in a valuable monetary touchdown, or simply a valueless three-and-out, remains to be seen.
Footnotes
1 15 U.S.C. § 1127; see also Trademark Manual of Examining Procedure (TMEP) § 901.02.
2 TMEP 1202.03.
3 In re Dimitri's Inc., 9 USPQ2d 1666 (TTAB 1988).
4 In re Astro-Gods Inc., 223 USPQ 621, 624 (TTAB 1984).
5 15 U.S.C. § 1052.
6 137 S. Ct. 1744 (2017).
7 Hornby v. TJX Cos., Inc., 87 USPQ2d 1411, 1427 (TTAB 2008).
8 See, e.g., Cent. Mfg. Co. v. Pure Fishing, Inc., No. 05 C 725, 2005 U.S. Dist. LEXIS 28280 (N.D. Ill. Nov. 16, 2005).
Originally published by Finnegan, July 2020
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
