‘The Game Plan’—How North American Professional Sports Franchises Conduct Trademark Clearance for New Team Names
Published: June 22, 2022
Brandon McCool Day Pitney LLP Boston, Massachusetts, USA
Professional sports in North America is a US $70+ billion industry, and franchise values continue to grow year after year. As symbols of considerable goodwill, reputation, and recognition, trademarks, including team names and logos, are some of a sports franchise’s most important and valuable assets. Consumers identify as fans and are tremendously loyal to teams and their brands, often passing their brand loyalty down to future generations.
Within the last few years, multiple professional sports franchises have announced plans to unveil new team names and primary logos. Whether as part of the launch of an expansion franchise (e.g., Seattle Kraken, Charlotte FC (Football Club), or Angel City FC) or the new identity of an existing franchise (e.g., Washington Commanders, Cleveland Guardians, or Edmonton Elks), several new franchises have launched their identities recently.
In each instance, the franchises vet their new trademarks before unveiling them, just like any new mark in any industry. The trademark clearance process provides both an assessment of risks (i.e., are there any third parties that may bring a claim of infringement?) and opportunities (i.e., what is the level of distinctiveness/strength of the mark, its registrability, and the ability to enforce against subsequent users of similar marks?). Trademark clearance ensures that all resources a franchise has spent on developing a new mark are not rendered futile if it turns out that a third party brings a claim of infringement that eventually results in a further rebrand.
Typically, a professional sports franchise spends considerably more resources on brand development for a new team name compared to the average brand development process. For example, the Cleveland Guardians MLB (Major League Baseball) franchise reviewed 1,198 name options, surveyed 40,000 fans, spent 140 hours interviewing fans and community leaders, and spent 100+ hours brainstorming prior to unveiling the new team name and logo. In addition, the actual trademark clearance process itself typically differs from the process used for marks in other industries.
‘Running out the Clock’—Taking Advantage of Time
For businesses in most industries that are preparing to launch a new brand name, time is normally not on their side. The legal team is often under pressure to “clear” the new name as soon as possible, with a tight timeline being dictated by the launch of the new product or service to be offered under the new mark. However, sports franchises can generally bide their time to work through the trademark clearance process thoroughly before publicly unveiling their new name and logo. Expansion franchises have more than a year to work with, as there is at least a full season between the date that the franchise is awarded and the date that it begins play.
The Cleveland Guardians baseball franchise reviewed 1,198 name options, surveyed 40,000 fans, spent 140 hours interviewing fans and community leaders, and spent 100+ hours brainstorming prior to unveiling its new team name and logo.
For example, the Charlotte MLS (Major League Soccer) franchise was awarded in December 2019 and the team began play in March 2022, and the Seattle NHL (National Hockey League) franchise was awarded in December 2018 and the team began play in October 2021. Existing franchises that change their team names obviously cannot be inactive while undergoing a rebrand. Instead, they employ strategies to create timing advantages, including using temporary names, or not committing to a set deadline to unveil the rebrand. For example, the Washington Redskins NFL (National Football League) team announced their intention to rebrand in July 2020, and stated that they would use the name Washington Football Team temporarily while undergoing the rebranding process. (In February 2022, it unveiled its new name and logo—Washington Commanders.)
Sports franchises use their timing advantages for several tasks, many of which stem from the trademark clearance process.
‘Advanced Scouting’—Conducting Broader and Deeper Searches
Typically, a business will conduct a clearance search that looks for similar marks used in connection with goods and/or services that are related to those intended to be offered under its proposed mark. This means that the search will likely cover not more than a handful of International (Nice) Classes of goods and services. However, the clearance search for new team names and logos typically involves upwards of 30 of the 45 classes, due to the broad range of licensed merchandise typically offered under a sports team name/logo and the wide range of industries in which team partners and sponsors operate.
A broad search allows for a fuller look at the potential risks of third-party objection. It also helps the franchise determine whether specific products or services should not be offered under the proposed mark, and/or whether the franchise can adopt strategies restricting use of the mark with regard to specific products or services to mitigate risks of potential objection. For example, on a given merchandise item, it might be decided to only use the team’s name alongside the team’s logo and other indicia—never by itself, due to a similar mark being registered for that same merchandise item.
‘New Teammates’—Turn Potential Adversaries into Business Partners
As part of the clearance process, sports franchises can use their timing advantages to consider creative solutions to potential issues that clearance searching has uncovered. For example, during a clearance search, the Seattle Kraken would have discovered Kraken Rum and its registrations (U.S. Reg. No. 3741146) for KRAKEN and (U.S. Reg. No. 4068154) for RELEASE THE KRAKEN, each covering rum. Shrewdly, the parties entered into a coexistence agreement, as well as a sponsorship agreement. whereby Kraken Rum became the official rum sponsor of the Seattle Kraken.
A submarine trademark application is filed in a country with a relatively obscure registry and an online database of pending applications that is not widely accessible.
Even if franchises do not turn every potential adversary into a sponsor, they use their timing advantages to evaluate potential obstacles, and in some cases negotiate coexistence agreements. For example, according to an Office Action response from the U.S. Patent and Trademark Office filed in support of registration of the mark VEGAS GOLDEN KNIGHTS (U.S. Reg. No. 5596245), prior to filing the application, the Vegas Golden Knights entered into a coexistence agreement with the NCAA’s Clarkson University and its GOLDEN KNIGHTS athletic teams. By waiting until these agreements are in place before publicly launching a new name, franchises can mitigate the risk of negotiations falling through, which could result in an objection to the adoption of the new name.
‘Don’t Get Picked Off’—Avoiding Public Leaks
The fact that a sports franchise’s launch of its brand or a rebrand process is often public and popular among consumers creates a tricky challenge during the trademark clearance process. Franchises must take precautions to prevent the following:
- Any leaks of the proposed name and logo during the clearance process that could result in consequences, such as individuals filing trademark applications for the new name before the franchise does;
- The flooding of counterfeit merchandise on the market; and
- Just the loss of excitement created in the local community at the time of the official unveiling.
Accordingly, franchises attempt to navigate the trademark clearance process while maintaining as much secrecy as possible.
If unaffiliated individuals trying to guess the new team name file trademark applications, this creates a significant potential obstacle for the franchise against securing registered rights in the new name. Franchises take precautions to try to avoid having individuals register trademarks before they can, and franchises use tactics when registering their own trademarks to avoid leaking the proposed team name.
All brand owners should endeavor to begin the trademark clearance and selection process as early as possible.
The Washington Commanders encountered this situation. In 2015, an individual named Philip McCauley filed more than 20 trademark applications for potential new team names, including WASHINGTON MONUMENTS, WASHINGTON REDTAILS, WASHINGTON VETERANS, and WASHINGTON WARRIORS. The team responded by challenging some of these applications. Usually, if a franchise sees that an individual has applied to register the identical desired name, it will oppose the application to prevent it from registering. For example, the Cleveland Guardians opposed applications to register WARRIORS, and others). Ultimately, third-party registrations do not prevent a team from choosing one of these names; however, they present an additional obstacle that a franchise might have to navigate around..
“Submarine” trademark filings are one tactic that teams employ to secure priority over these third-party trademark applications—and to keep the desired name a secret. A submarine trademark application is one that is filed in a country with a relatively obscure registry and an online database of pending applications that is not widely accessible. Once you file an application in such a country, as long as it is party to the Paris Convention for the Protection of Intellectual Property, you obtain a six-month priority filing window. This means that a franchise can file in the United States up to six months after the initial submarine filing, and the U.S. application will receive the benefit of a priority date that matches the submarine application’s filing date.
The Cleveland Guardians employed this tactic recently. The franchise announced its rebrand on July 23, 2021. On the same day, they filed a U.S. trademark application (U.S. App. No. 90844557) for CLEVELAND GUARDIANS. However, the application claims an April 8, 2021, priority date because the franchise filed an application in Mauritius on that date and the U.S. application was filed within the following six-month priority period. The result is that the Cleveland Guardians’ U.S. application had priority over any application filed after April 8, 2021, in the months leading up to the public unveiling of the rebrand though the franchise did not file the publicly viewable U.S. application until the day it unveiled the rebrand.
Franchises also take similar precautions to avoid individuals registering domains and social media accounts (which are claimed on a first-come-first-served basis) before they can, and they use tactics when registering their own domains and social media accounts to avoid leaking the proposed team name. For example, by registering several variations for multiple team names, they can avoid Internet sleuths being able to identify the actual new name with any certainty (e.g., the Seattle Kraken registered 38 domain names reflecting several potential team name options). Franchises also typically use a privacy service so that the public cannot access the Whois information associated with domain registrations. Other tactics they use include internal decoy names and using a vendor to register domains and social media accounts.
‘Final Score’—Conclusion and Takeaways
The biggest takeaway is that all brand owners should endeavor to begin the trademark clearance and selection process as early as possible. Sports franchises can use timing to their advantage to conduct broad and in-depth clearance searches, and to identify and mitigate potential risks and occasionally turn them into opportunities. Additionally, using online privacy tools and decoy trademark, domain, and social media account registrations can help new brands stay undetected until public launch, and help to mitigate against third-party applications that can pose obstacles to securing a trademark registration for the new name.
Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.
© 2022 International Trademark Association
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