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Partner Mike T. Smith quoted in Washington Business Journal

Washington’s NFL team could still profit off its discarded name

By Katishi Maake  – Staff Reporter, Washington Business Journal

Jul 20, 2020, 7:02am EDT 

The Washington football team will formally retire its name and logo after years of public pressure pointing to the name’s racist origin — but owner Dan Snyder still has the ability to legally profit off of the controversial name.

The Washington NFL team may have agreed to finally drop its long-disparaged name. But that doesn’t mean the franchise can’t still legally profit from it. 

The Washington football team said July 13 it will formally retire its name and logo after years of public pressure pointing to the name’s racist origin. But even then, it will still remain the rightful holder of the current name’s trademark — and therefore, can still legally sell merchandise bearing it, according to trademark attorneys. In order to keep it active, the trademark must still remain in use, they said, or else it could be available for sale to another bidder.

Mark could become ‘abandoned’

“The law is, once you stop using a mark with an intent not to resume use, then that becomes abandoned,” said Michael Smith, trademark attorney with Birch, Stewart, Kolasch & Birch LLP, an intellectual property law firm in Falls Church. “As long as the Washington football team continues to use ‘Redskins’ in connection with souvenirs, then those trademark rights do not die. The trademark rights would not be abandoned.” 

It’s another question whether the team plans to continue selling products bearing the current name — or even whether there’s a market for them if it does. We have reached out for comment from the team and will update this when we hear back. 

But major retailers have showed an increasing reluctance to sell gear with the current name, a move that helped spark the team’s decision to change it in the first place. Nike, Target, Walmart and Dick’s Sporting Goods are among the larger sports retailers that have pulled the team’s apparel from their online shops. The NFL official fan shop continues to sell the Washington football team’s apparel and offers throwback jerseys across the league’s franchises.

Name trademark vs. logo copyright

In the event that the team drops the trademark, however, it may be difficult for another party to acquire it and profit off of it in the same way, said Josh Gerben, principal at Gerben Law Firm PLLC, based in D.C. That’s because the logo, which the team also plans to retire, is covered under separate copyright law. Gerben said copyright law differs from trademark law in the sense that it doesn’t operate as a “use it or lose it system,” so the logo would remain under team ownership. 

“Once you draw something and put it out there, you have copyright rights that last decades, regardless of whether you use it,” Gerben said in an interview. “Let’s say the team kept the same colors. Now all of a sudden, they’re going to have trademark rights around the look and feel of those colors. They’re going to have copyright rights on the old logo. The one asset that would be the most at risk would be the name.” 

Trademark issues have been cited for the team’s delay in announcing a new name. It’s unclear whether those issues are related to Philip Martin McCauley, an Alexandria Realtor who filed trademark claims for dozens of names speculated as options for the team going forward, including Washington Warriors, Redtails, Red Wolves and Monuments. A few of McCauley’s trademarks have gained registration, which means he’s submitted a sworn statement that he has sales of goods listed under the trademark. 

McCauley told CNN last week that his mission is to encourage a name change, not make money off of the team, and that he has offered to give a trademark for free, but had not been contacted by the team.

New trademark may require negotiations 

McCauley has since hired Darren Heitner of Heitner Legal PLLC, which penned a letter July 17 to the team that said the Realtor “will gladly do whatever is in his power to clear a path for the Washington NFL team to rebrand itself without the need to incur substantial legal fees.” 

Both Smith and Gerben say it would be difficult for McCauley to prove an intent to use the trademarks long term. Most likely, they said, if the team were to pursue any of the names that he has registered, a relatively small payment would be enough to settle it. 

“The Washington NFL team could file a petition to cancel against Mr. McCauley’s trademark registration because he’s not using them and he’s admitted as much,” Gerben said. “What ends up happening in these situations: Even though his rights are very questionable, if he was willing to part with them at a very reasonable price, then it would make more sense to pay him off and make sure you don’t have a legal battle.”

The name change has been overshadowed by recent allegations by 15 former female employees that certain members of Snyder’s leadership team engaged in sexual harassment and verbal abuse for more than a decade, according to a report by The Washington Post. Three of the five leadership team members departed the team in the last week, while the other two had left in years prior. Snyder and former team President Bruce Allen were not directly accused of any misconduct in the Post report, but some of the women said they believe both were aware of inappropriate behavior and created a toxic workplace culture.

Snyder responded the next day with a statement that said the behavior “has no place in our franchise or society.” The NFL, whose statement said the women’s allegations are “serious, disturbing and contrary to the NFL’s values,” is likely to fine the franchise and discipline the individuals, but not force Snyder to sell, though it depends on results of an investigation by a law firm hired by the team, according to the Post, citing anonymous sources.

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