Seven years ago, Daniel Snyder said that he would never change the name of the Washington D.C. National Football League team that he owns. In fact, he was so stern in his position that he told a reporter that caps could be used attached to the word “never.” Yet, the franchise has recently confirmed that it is conducting a thorough review of the team’s name and the press release makes it clear that Snyder is backtracking from his prior statement.
Assuming the Washington D.C.-based team removes the “Redskins” name and mascot, what should be the substitute? One offshore sportsbook has made “Redtails” the favorite, ahead of “Presidents,” “Generals,” and “Memorials.” Interestingly, there is an application to register the “Washington Redtails” pending with the United States Patent and Trademark Office, and PRO-FOOTBALL, Inc. (the owner of the Washington Redskins trademark registrations) is not the applicant.
On February 22, Deron Hogans and Thaniel Van Amerongen, employees at Deloitte and residents of Maryland and Virginia, respectively, jointly filed an application to register the “Washington Redtails” trademark in association with the licensing of intellectual property rights. It was published for opposition on June 23, which is typically one of the last steps in the process prior to receipt of a registration certificate.
No oppositions have been filed against the “Washington Redtails” application; however, the period to oppose or seek an extension to oppose registration of the application does not expire until July 23. Thus, it is possible that the pending application is opposed. If it is not opposed, then PRO-FOOTBALL, Inc. may be beating itself up should it ultimately choose to rebrand from the Redskins name to the Redtails.
Yet, even if Hogans and Van Amerongen get past the publication stage of the trademark registration process, they will still be required to convert their intent-to-use filing to an actual use filing by way of submitting an appropriate statement of use that demonstrates use of the “Washington Redtails” mark in a commercial manner and in conjunction with the licensing of intellectual property rights. Typically this would be demonstrated by way of submitting advertising and marketing materials.
The application appears to be nothing more than a shrewd attempt by a duo to potentially make some money from PRO-FOOTBALL, Inc. should it receive the registration and should the Washington D.C. NFL team be so interested in the name that it is willing to purchase it instead of go through the process of trying to revoke the registration. However, the examining attorney appointed to the file may realize that this application likely does not fall within the scope of what should receive registration in connection with a company or individuals in the business of licensing intellectual property rights. Examples of registrations that make sense in this space are “QUALCOMM,” which is used for licensing its own chip technology and “ASCAP,” which is used in conjunction with licensing music of others.
However, if PRO-FOOTBALL, Inc. decided to file an application to register the trademark for “Washington Redtails” today, it would likely be met with a suspension notice while the application filed by Hogans and Van Amerongen remains pending. It pays to be proactive in seeking trademark registrations, even if you firmly believe you will NEVER need to rebrand.
Darren Heitner is the founder of Heitner Legal. He is the author of How to Play the Game: What Every Sports Attorney Needs to Know, published by the American Bar Association, and is an adjunct professor at the University of Florida Levin College of Law. You can reach him by email at heitner@gmail.com and follow him on Twitter at @DarrenHeitner.