I was recently contacted by a representative of attorney James McCarthy, who’s a partner at the intellectual property law firm McDonnell Boehnen Hulbert & Berghoff. McCarthy was described to me as “a sports-loving lawyer” who had previously written about sports branding, and who could therefore help sort out some of the issues regarding the current trademark litigation involving the Redskins’ team name.
I suggested doing an e-mail interview with McCarthy, and he agreed. I didn’t ask about his personal feelings regarding the team’s name, and he didn’t offer them. We just stuck to the legal issues. Here we go:
Uni Watch: Let’s start with the whole notion of what a trademark is (and isn’t). Can you please provide a quick, layman’s explanation of what a trademark is, how trademark law works, and why all of this is so important to the sports world?
James McCarthy: A trademark is an identification of the source of a product or service. Therefore, the trademark REDSKINS indicates the source of any shirts, uniforms, or football games bearing that mark, just like the trademark COCA-COLA or McDONALD’S indicates the source of beverages or food/restaurants, respectively. In the United States, the value of a trademark is based on how extensively and where the mark is used. Federal registration of a trademark will allow the owner to have presumptive nationwide rights regardless of how and where the mark is used. Since the REDSKINS mark is used in all 50 states, they have common law rights based on use, as well as nationwide rights based on the Federal registrations.
UW: What are the basic parameters of the current legal action aimed at stripping the Redskins of their trademark protection?
JM: The current action is being brought by a group of American Indians claiming that the mark is “scandalous,” since U.S. Trademark law prohibits the registration of any mark that is considered “immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
The action, if successful, would result in the cancellation of the REDSKINS federal trademark registration. The Redskins would still have nationwide common law rights.
UW: In your opinion, do the plaintiffs have a good case?
JM: It’s difficult to know this. In a previous action, the plaintiffs successfully canceled the [team's] registration, but the decision was ultimately overturned on appeal because the plaintiffs did not have standing to bring the case. This new action seeks to remedy the standing issue, but the merits of the case will be strongly contested. Both sides will submit evidence showing that the REDSKINS mark is (or is not) “immoral, deceptive, or scandalous matter.”
Potentially more problematic than the case, however, is the recent House bill that is seeking to amend the U.S. Trademark laws to prohibit any registrations using the term redskins in reference to Native Americans. The new legislation would cancel the current registrations without the need for costly litigation and uncertain results. It could also limit the Redskins’ access to Federal courts to enforce their common law rights. In the longer term, additional legislation could be drafted to attempt to further limit the Redskins’ First Amendment rights (by defining the team name as hate speech, etc.).
UW: I’m told that you believe that even if the Redskins lose their trademark protection, it will not impact them financially. Why not?
JM: Even if the REDSKINS trademark registrations are cancelled, they still have very valuable, nationwide common law rights based on the extensive and continuous use of the mark. These rights are exclusive and enforceable.
In addition to the basic trademark rights, the team has a First Amendment right to “commercial speech” that probably protects its ability to use the term REDSKINS, even if the trademark registration is lost.
UW: Redskins lawyer Robert Raskopf has said that the team would suffer “every imaginable loss you can think of” if it no longer had the exclusive marketing rights to its name. Agree or disagree?
JM: I agree that the loss of exclusive marketing rights would be very damaging to the team’s finances in the short term. However, as described above, I cannot image a situation where that would be the end result. The common law use of the term REDSKINS has been too extensive and the common law rights are too strong. In addition, they have rights in other images that do not include the name REDSKINS (the Native American head design, the “R” design, etc.).
UW: Gut feeling: Taking everything into account (legal issues, public opinion, political pressure, etc.), will the Redskins still be called the Redskins 15 years from now?
JM: The brand is so valuable, and First Amendment rights are so valued in the United States, that the Redskins will probably be named the Redskins for as long as the team’s owners want to keep the name. It is doubtful that they will be forced to change it. However, political pressure, the reaction of the fan base and consumers, or a change of ownership could result in a voluntary decision to change the name. They could follow the path of colleges like Marquette (Warriors to Golden Eagles) or Miami of Ohio (Redskins to Red Hawks) and choose to change. The extensive exposure of the NFL and the value of current broadcasting rights would allow them to acquire very valuable rights in any new name and trademark very quickly.
UW: Okay, so you’re basically saying anything is possible — but we all knew that already. I’m asking you what you think will happen.
JM: Fifteen years is a long time. Certainly opinions can change — it was only about 15 years ago that President Clinton signed the Defense of Marriage Act that was just challenged in the Supreme Court. Based on the state of the laws today, however, I would guess that the Redskins will still be the Redskins 15 years from now, especially since it has been over 20 years since the trademark was originally challenged.
Raffle reminder: I’m currently raffling off a few custom-engraved tins of Farkas Eye Black. For details, look here.
Show & Tell — Help Wanted: The good news is that the next installment of my monthly Show & Tell event is coming up next Wednesday, April 10, 8pm, at Freddy’s. The bad news is that my photographer just cancelled on me, so I could use a shutterbug for the evening. The photos are simple portraits in a poorly lit room, like the ones you see on the S&T site. Compensation is, admittedly, meager: free beer, plus we pass the hat for the photographer. (There’s no cover charge and I don’t get paid for this gig, so nobody else is making any $$$ either — it’s strictly a fun volunteer project.) Interested? If so, drop me a line. Thanks.
Uni Watch News Ticker: Mets wore their new alt cap for the first time yesterday. I’m fine with the orange brim but hate — hate — the white outline on the logo, which looks way too clunky. … UVA baseball went G.I. Joe the other day (from Steve H). … New rugby kit for the Australian Wallabies (From Josh Jacobs). … Looks like Arkansas football has a new secondary logo. “It appears on the cover of the spring football guide and is also used as a header on every page within,” says Seth Shaw. … Several readers have noted that the demise of the Cool Flo batting helmet means, among other things, that the Rockies are now wearing solid purple helmets, instead of the black/purple hybrid they’d been wearing in recent years. … Casey Vock has brought my attention to his site, ILGear, which is devoted to lacrosse uniforms and equipment. Here’s a representative article, about Syracuse’s gray helmets and jerseys for this weekend. … Kyle Peterson has unlocked some of the clues to the Vikings’ new uniforms, revealing that the jersey will apparently have a Nikelace but no neck roll. … Some emergency state funding has saved the Towson baseball team. So the players have taken the tape off their jersey chests (from Mike McIntosh). … Dan Hutcheson wondered what it would be like if every team in a given city used the same colors, sort of like in Pittsburgh. Here’s what he came up with. “I’m sure changing colors of some teams is blasphemy in some areas, but it was a fun and interesting project,” he says. … Dan Klempner saw this awesome satin baseball uni at a museum in Alameda, California. … Josh Reddick of the A’s in involved in a beard-growing challenge (from Kurt Esposito). … The old Big East teams will reportedly rebrand as the AAC. … A Bay Area insurance company is taking some serious liberties with the Warriors’ logo (from Sean Robbins). … You can now vote on WVU’s official fan shirt, whatever that means (from Brice Wallace). … New wordmark for UConn. Its rollout was accompanied by this “Marking is your friend” letter from the university president, which was sent to all students and faculty yesterday (from Gregory Koch). … New kits for Barca (from Joe Schmidt). … “Had some time to kill in Midland, Texas, so I checked out the Commemorative Air Force Airpower Museum, which had a few uni-notable items,” says Matthew Wolfram. “First, they had a picture of FDR wearing a black armband while signing the declaration of war on the Japanese. And the museum’s list year-by-year list of notable items included an interesting NFL note for 1945.” … A familiar but disturbing sight during cold-weather games: double logo creep (screen shot by Diego Bauzá). … Speaking of cold weather, Mets pitcher Matt Harvey said he didn’t wear a jacket while running on the bases on Tuesday night because he believes a jacket doesn’t belong on a baseball field.” … Here’s Michael Morse of the Mariners swinging a bat with a Nationals knob decal (good spot by Jason Mott). … “The skateboard apparel company LRG (Lifted Research Group) has ‘lifted’ the old White Sox logo,” says Andrew Lockett. … “I am a high school umpire in New Mexico,” says Adam Minnick. “I recently did a game in which Goddard High School went old-school. All their players went high-cuffed.” … Good, long article on the situation involving Native American nicknames, mascots, etc. (Kurt Esposito again). … Last week I mentioned Cerulean Salt, which is the excellent new album by the indie band Waxahatchie. Saw them live the night before last, and boy are they good. Don’t miss. … Kevin Youlkilis tried to black out the Nike logo on his undershirt collar last night (from Alex Melendez). … As several readers have noticed, MLB can’t decide if this is Opening Day, Opening Series, or Opening Week. … Befuddling day for those of us who are meat fanatics, as the beef and pork industries have come up with a new set of meat naming standards. Eh, just forget it — one man’s shell steak is another’s New York strip and yet another’s Kansas City strip, and there’s no way you’re gonna get everyone to stop using their preferred nomenclature. … Truly hideous G.I. Joes for Gardner Webb baseball (from Bob Taylor). … “My alma mater, East Tennessee State University, has decided to restart its football program, which ended in 2003,” writes Jason Roberts. “At the press conference announcing the program, they had several helmet prototypes, including one using the school’s official tartan pattern. I’ve not seen that type of stripe on a helmet before.” … The Pro Bowl, aka the Thing That Wouldn’t Die, may get a new, draft-based format, sort of like choosing up sides in gym class or something. As Johnny Bruno points out, “This would likely make the uniforms even more ridiculous.” … Also from Johnny: Possible rebranding in the works for SUNY-Buffalo.
Around 11am I’ll be heading to LaGuardia and flying to Seattle, where I’ll be spending the next several days. Looking forward to meeting lots of you on Monday night, 7:30pm, at the College Inn Pub. See you then/there.
Monday’s and Tuesday’s entries may be posted a few hours later than usual, since I’ll be on west coast time. Thanks in advance for your patience.