Cleveland Indians retire controversial ‘Chief Wahoo’ trademark
US baseball team the Cleveland Indians announced on Monday that they will retire their controversial ‘Chief Wahoo’ logo from their uniforms next year.
The logo depicts a grinning red-faced Native American wearing a red feather in his hair.
In 2000, the Penobscot Indian Nation formally requested that the ‘Chief Wahoo’ logo be dropped by the baseball team.
The decision comes despite the US Supreme Court ruling in Matal v Tam that the government’s ban on “disparaging” trademarks was unconstitutional, as previously reported by WIPR.
Dallas-based Jason Bloom, partner at Haynes and Boone, told WIPR that although the Supreme Court judgment in Tam could have flooded the marketplace with disparaging trademarks, this has not happened.
“The decision by the Cleveland Indians, post-Tam, to largely discontinue use of the Chief Wahoo mark, shows that market forces and sound business judgement will still be the primary driver behind companies’ decisions to use or discontinue potentially offensive marks,” he said.
Although registering a potentially offensive trademark may now be easier, Bloom said it is likely that more US sporting teams will start to phase out such logos, as offending a fan-base could lead to a loss in sales.
Richard Assmus, a Chicago-based lawyer at Mayer Brown, added that although the focus in the Tam case was trademark registration, trademark rights are based on use and recognition.
“A decision to limit the scope of use of a trademark will weaken those rights,” he said.
“Further, if the use was truly local only, any federally registered rights may be impossible to maintain when the registrations come up for renewal.”
While the Cleveland Indians will be altering their uniform, items with the logo will still be available for purchase.
Georgia-based Jason Rosenberg, partner at Alston & Bird, said that completely abandoning a trademark would result in the loss of the rights to it.
“Teams are likely to find themselves walking a fine line between distancing themselves from a brand that some consumers find repugnant, while at the same time feeling compelled to sell some merchandise with the logo or name,” he commented.
Dropping the trademark entirely could lead to other companies picking it up.
Rosenberg added: “In the end, I suspect we’ll see more teams undergo ‘soft’ transitions like the Cleveland Indians, carefully monitoring consumer and media sentiment as they determine how far to take it.”
Trademarks that have been federally registered for less than five years are subject to challenges that older trademarks are immune to, according to Washington, DC-based Marsha Gentner, senior counsel in Dykema’s IP group.
She explained: “With long existing marks, not only do you have a strong measure of value in that asset, you also have comfort from legal challenges against use and registration of those rights, especially now that there is no risk of challenge on the basis that the mark is disparaging, scandalous or immoral.”
The Cleveland Indians aren’t the only US sporting team to have a controversial logo. American football outfit the Washington Redskins also use a Native American to represent the team. However, CBS Sports reported that the team have no plans to remove the trademark.
Last July, WIPR reported that a group of Native Americans had dropped a trademark suit against the Washington Redskins. The group wrote to the US Court of Appeals for the Fourth Circuit saying that there is no need for an oral argument because it agreed with the US Supreme Court’s decision in Tam.
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