Will Chief Wahoo be around for another World Series? Latest related trademark battles could threaten longevity of controversial Indians icon

As seen in Crain's Cleveland Business on November 15, 2016

No one would argue that the Cleveland Indians had a great run this past season. Thanks to their qualifying for the World Series, images of Chief Wahoo deluged our television screens, our print media and our social media postings. Beneath the fanfare, however, are some very serious legal issues that could ultimately challenge the long-term use and value of the Indians icon.

The battle over the appropriateness of using Chief Wahoo has been raging for years now. In 2014, when the Washington Redskins lost a legal battle to protect the registration of its own mascot and Redskins name, the questions around the continued use of Chief Wahoo again came to the forefront. More recently, another legal battle began when a band called "The Slants" attempted to register the band's name which was considered to be disparaging against persons of Asian descent.

At issue is a federal law that bars the registration of trademarks which consist of or comprise immoral, deceptive or scandalous matter or matter which may disparage individuals. With all of the current focus on the rights of American citizens, there are some in the legal field who argue that this law, which is part of the 1946 Lanham Trademark Act, violates Americans' rights to free speech. This is one of the arguments being used by the Washington Redskins, who are attempting to overturn the 2014 decision issued by the Trademark Board of the United States Patent and Trademark Office (USPTO) which resulted in the Redskins' trademark registrations being cancelled -- even after decades of using the familiar icon and name. Similarly, THE SLANTS mark was denied registration by the USPTO, but this decision was reversed on appeal by a Federal Court. The Slants' case is expected to be heard by the Supreme Court sometime in mid-2017.

In early 2016, a similar attempt to cancel a Chief Wahoo logo registration was filed with the USPTO by an organization called People Not Mascots, Inc. There are also, of course, numerous protests and negative publicity involving Chief Wahoo. The matter at the USPTO involving the Chief Wahoo registration is suspended until the Supreme Court makes a decision on THE SLANTS.

So what does all this mean for the Chief Wahoo trademark? With the notoriety of the ongoing dispute involving the Redskins' trademarks and the more recent publicity around The Slants, there is certainly the possibility that the use of Chief Wahoo could be abated. Of course, at a time when Cleveland is playing in the World Series, most fans don't want to think about their team without their beloved Chief Wahoo. Depending on how the Supreme Court decides in The Slants' case, it is something worth considering—perhaps not right now but not-too-far into the future.

What would it mean if one were to successfully challenge the Chief Wahoo trademark registration? The effects would likely not be felt immediately. After all, the Indians have been widely using Chief Wahoo for decades. The loss of the registration would not mean they couldn't continue using the logo. It is important to consider that trademarks are created as a result of use. However, without protection of the trademark by a federal registration, it may potentially be more difficult to justify the continued use of the trademark. Most organizations, whether they are manufacturers or sports teams, would agree that it's not worthwhile to keep investing to build goodwill in something where there might be more difficulty to ensure sufficient protection.

Ultimately what will be the fate of our longstanding Chief Wahoo? Only time (and the courts) can tell. In the meantime, however, this situation provides some valuable lessons for entrepreneurs and corporations that have trademark assets worth protecting by registrations. For some organizations that couldn't previously register a trademark that was seen as disparaging, offensive, immoral, or the like, they could potentially be able to secure a registration if the courts strike down the relevant provision of the federal law. If the court determines alternatively, then organizations that thought their controversial or offensive trademarks were protected could lose their registration, potentially making it more difficult to keep copycats at bay. In turn, it could be easier for organizations to challenge such offensive trademarks.

Organizations looking to create a new trademark should heed the current controversies, perhaps avoiding altogether a trademark that could be seen as offensive, and ultimately not registrable or easily challenged (not to mention the marketing issues surrounding such trademarks).

Whichever way the courts decide, the importance of registering a trademark cannot be overstated. Although a trademark can be created by adding a "TM" after the name or symbol with continued use, an official registration of that trademark makes it a legally protected asset across the country. Don't make the mistake of leaving one of your company's most valuable assets unprotected.

In the meantime, let's celebrate a phenomenal season and look forward to an even more successful 2017 season!

Sean Mellino is a partner in the intellectual property practice group of Cleveland-based Walter | Haverfield LLP.