Just in time for Major League Baseball’s Opening Day: let’s talk about name changes in professional sports.
In 2022, the Cleveland Guardians baseball team and Washington Commanders football team will take the field for the first time. These are the latest teams to change their names after decades of backlash about sports mascots, team names, and images being deemed offensive to Native Americans and other minorities.
But these changes come with challenges.
Who’s on first: Why trademarks matter
A trademark is shorthand the public can rely on to know and understand the quality it has come to expect in the goods or services it identifies. But if a trademark is no longer used for any reason, the owner will lose that goodwill and the all-important ability to keep others from using it.
What’s on second: Using a legacy brand
Continuing to sell some kind of products with a legacy brand is the simplest way to maintain control and prevent third parties from using it. For example, in light of the gun violence connotation, the NBA’s Washington Bullets became the Washington Wizards in the 1990s. Decades later, Washington Bullets L.P., the same entity that owns the WIZARDS marks, still owns at least one active trademark registration for the BULLETS mark as well as the even older BALTIMORE BULLETS marks. Bullets merchandise continues to be sold through the NBA and other outlets. This allows the NBA to prevent third party use of BULLETS for these goods.
I don’t know’s on third: The tricky problem of unauthorized merchandise
For the Guardians, Commanders, and other teams that have dropped their team names, continuing to promote the former brands that are considered offensive may not be a viable option. But sellers that aren’t connected with the teams often take advantage of a market for that legacy merchandise.
Some courts recognize “residual goodwill,” i.e., public recognition for the brand even after the company stops using it. Or the team might still be able to enforce its rights if the third party misleads the public, like by falsely indicating that it is affiliated with the team. But these cases are not clear cut.
If you think all of this makes about as much sense as the infield fly rule, you’re not alone. For now, the Guardians and Commanders are basking in that new-brand glow and the rest of us are just happy that spring sports are starting. Play ball!
The Markery team is available to assist with your trademark needs. If you have questions, please contact Katrina Hull, Jackie Patt, or Stacey Watson.