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Have a Game Plan When Seeking to Secure Intellectual Property Rights

July 29, 2020

Sean MellinoKevin Soucek

July 29, 2020 

When attempting to secure certain intellectual property rights, it is best to have a game plan in place before taking the field. This plan should be enacted timely and include provisions to overcome potential obstacles as identified in the plan.

As any new sport season brings its normal set of challenges, a new challenge has arisen where some sports teams are considering substantial rebranding, including team name changes. However, prior to such an extensive undertaking, the intellectual property rights in connection with this new team name should be secured while also considering any intellectual property rights of others. As a result, careful planning and execution are called for since balancing these issues is a vital component of any team’s viable business plan.

As an example, the former Washington Redskins, now the Washington Football Team, appear to be navigating through a field of legal trademark issues as they explore options for a new team name. Some of these issues most likely involve a number of trademark and/or service mark applications filed by third parties in an early attempt to secure rights to the Washington Football Team’s new name and sell the rights to that trademark to the Washington Football Team. As such, this situation may offer a glimpse of the trademark challenges that the Cleveland Indians could come across, with potentially conflicting trademark applications, while exploring their options in an attempt to secure the intellectual property rights in a potential new team name.

When filing a trademark and/or service mark application with the U.S. Patent and Trademark Office (USPTO), an applicant may file such an application under two bases: (1) active use in commerce basis, or (2) intent-to-use basis. In view of some of the hurdles and related legal challenges presently faced by the Washington Football Team’s scenario, many of these third-party applicants elected to file their applications for potential, speculative replacement team names under an intent-to-use basis. However, when filing an intent-to-use trademark application, the applicant must assert a bona fide intent to use the mark in commerce, as of the application’s filing date. An application that is not filed with a good faith intent to use is potentially voidable. (It is also important to note that a trademark application may only mature into a registration when the applicant shows actual use of the mark in connection with those goods and/or services in U.S. commerce within a certain timeframe.)

The Washington Football Team’s game plan would certainly involve a thorough effort at clearing the field and tackling any potentially conflicting trademark application(s) that hypothetically could present an obstacle to the Washington Football Team securing the intellectual property rights to a new team name. Should the Cleveland Indians decide to transition to a new name, one can expect a similar game plan.

Nevertheless, as with any game plan, it must remain flexible and dynamic to meet any potential obstacles. More importantly, adding experienced trademark counsel to your own team roster could be a game changer.