Will the Washington Commanders make its mark?
For fans of American football, National Football League (NFL) team the Washington Commanders will be a familiar name.
It is a name that evokes a long and contentious backstory, having had two former identities: first the ‘Washington Redskins’, and then the temporary moniker the ‘Washington Football Team’.
Owner Dan Synder has been mired in controversy over an allegedly questionable internal work culture, and has had his work cut out on fixing the team’s reputation.
The team subsequently had a much-needed rebrand, and the new ‘Commanders’ name and team kit was born in February 2022.
Snyder announced on May 12, 2023 that the team had reached an agreement to sell the team to a new owner.
But news followed swiftly on May 18 that the US Patent and Trademark Office (USPTO) had rejected the team’s applications for the marks ‘Washington Commanders’ and ‘Commanders’.
Trademark 'squatters'
Citing likelihood of confusion with existing registrations, the office primarily referenced ‘Commanders’ Classic’, which is the name of the annual college football game between the US Army and the US Air Force. Other marks with the marks ‘Washington’ or ‘Commander’ that are used to sell goods were also cited.
It also referenced prior-filed applications for ‘Washington Space Commanders’ and ‘Washington Wolf Commanders’, owned by Martin McCaulay, a collector of various marks belonging to fictional sports teams.
McCaulay has been branded a trademark squatter, and faced accusations of blocking the real-world team from adopting a new name and attempting to profit from the team’s controversy, according to The Washington Post.
In a statement, a Commanders spokesperson said that the team viewed the USPTO’s decision as “an ordinary course step in the standard trademark registration process”, and argued that “there is no likelihood of confusion” between its name and the other cited registrations.
“We do not believe that any trademark registrations that were obtained by squatters who attempted to capitalise on the club’s name change should stand in the way of our registrations,” they said, as published by The Washington Post on May 25.
According to Emily Kappers, counsel at Crowell & Moring, the NFL has already filed responses to the USPTO’s refusals, “signalling both its continued interest in the ‘Commanders’ name and a desire to achieve federal registration”.
All in a name
But has the team dropped the ball and failed to set up the necessary IP filings in advance? And is it likely to achieve registration?
Josh Gerben, trademark attorney and founder of Gerben Perrott, says the Commanders “will likely be able to work around the issues found by the USPTO...but it could take some time.”
According to Gerben, a Gerben Perrott study of USPTO data from 2020 and 2021 shows that about 17% of all trademark filings get a similar type of refusal.
Writing on LinkedIn, he continued: “A refusal such as this can delay registration anywhere from six months to about three years. Needless to say, this is not ideal (especially if you have a lot of trademark enforcement to do).”
Mark Sommers, a partner at Finnegan, believes that the USPTO’s initial office action will have no consequence or impact on the right of Washington, DC’s professional football franchise to use ‘Washington Commanders’ as the name of the team and associated affinity merchandise.
“The initial refusal raised by the USPTO examining attorney concerned a prior registration covering an armed services football bowl game, along with some anticipatory citations of two prior-pending intent-to-use applications for ‘Washington Space Commanders’ and ‘Washington Wolf Commanders’, covering ‘shirts’ by an enterprising trademark squatter [McCaulay],” says Sommers.
The USPTO’s decision, he adds, “will not and cannot serve as an impediment to an applicant’s use”, since the USPTO is jurisdictionally limited to making determinations of the right to register trademarks—not the right to use them.
He also points out that this is only an initial refusal and the team will have the opportunity to file a response, “be that arguing against the refusal, submitting a co-existence agreement, or various other options”.
“The bigger and more interesting question concerns whether the Commanders’ name will be jettisoned in favour of a new name, given a much-needed fresh start for that franchise after its sale from a much-maligned and legally impugned prior owner to its new investor group.”
An ‘imperfect’ process
For Kappers, the USPTO’s refusal to register the Commanders’ marks “places the imperfect nature of the examination process on full display” and that “consumers are far too sophisticated to be confused by similar marks.
The common element of the word ‘Commanders’ between the football team’s applied-for marks and the ‘Commanders’ Classic’ registered mark is “largely where any perceived overlap ends”, she says.
“Practically speaking, there is no likelihood that consumers will be confused by an intercollegiate football game between military academies and an NFL team. Consumers are far too sophisticated.
“Moreover, consumers are conditioned to understand that professional sports teams and collegiate teams—despite sharing the same sport—are not sponsored, endorsed, or otherwise related to each other.”
Missing the mark?
Kappers adds that the USPTO’s refusals “serve to demonstrate that the trademark examination process is not infallible and that it can miss the mark”.
“Trademark examiners are limited to reviewing what is included in the four corners of a trademark registration certificate or application’s filing particulars; they do not consider real-world implications or practicalities.”
Also worth noting, she says, are other instances in which a professional sports team has sought registration of their name only to face an initial refusal based on a college team’s prior registration.
For example, when Las Vegas’ NHL team sought to register its name ‘Vegas Golden Knights’, its application was initially refused based on a perceived likelihood of confusion with College of Saint Rose’s prior registration for ‘Golden Knights of the College of Saint Rose’ for intercollegiate sports teams and related sports merchandise.
“The NHL team argued that sports fans are both accustomed and readily able to distinguish between unrelated professional and collegiate teams—even if they share the same name or sport,” explains Kappers. “And, ultimately, the NHL team enjoyed a withdrawal of the refusal and successful registration of the ‘Vegas Golden Knights’ name.”
As with the Golden Knights, says Kappers, “it is likely that the Washington Commanders’ applications will similarly achieve registration along the same lines of reasoning.”
Whether its ‘Commanders’ name will stick and its reputation healed—that’s another question.
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