World Trademark Review quoted Haynes and Boone, LLP Associate Mike McArthur extensively in an article about the trademark, licensing and policing rebrand considerations stemming from the Washington NFL team’s decision to retire the “Redskins” name.
Here is an excerpt:
Don’t Miss Opportunities to Future-Proof Your Brand
However, as Mike McArthur, associate at Haynes and Boone, acknowledges, this week’s announcement will appease those sponsors “but doing so without a replacement on hand will add time, difficulty and expense to the already complex and costly process”.
A voluntary change can be positioned as positive evolution and has commercial payback. A rush job affects those commercial opportunities in the short term and adds to the cost of rebranding. This applies to securing IP rights (more on that shortly) and related assets such as domain names. “Purchasing domain names may be even more problematic because the opportunity for stealth negotiations was forfeited by the early announcement,” McArthur notes. “The registrant of ‘washingtonredwolves.com’, for example, is going to know that an NFL team with deep pockets is on the other side of the table, and the asking price will almost certainly reflect that fact.”
Announce a New Brand Once You Are in a Position to Reveal the New Name
McArthur reflects: “The announcement has and will continue to spur other individuals to file for potential names, creating additional risks of a registry block. While the team may have strong arguments to challenge any of these filings for lacking the requisite intent to use the respective mark in commerce, such a challenge could become very expensive and take years to resolve should they run into a motivated applicant looking for a payday. These risks would have been mitigated significantly had the team adopted and filed for a new name before the announcement.”
Decide What to Do With the Old Intellectual Property
McArthur reflects: “The Washington Wizards and the NBA still sell clothing items branded with the BULLETS mark on store.nba.com. They have relied on this use to maintain one of their longstanding trademark registrations for BULLETS and the design. This use and registration helps block others from adopting the mark. While the REDSKINS mark and logo are more controversial, the team will likely take a similar approach here to prevent a third party from attempting to develop rights in the retired brands. Doing so would help ensure that the team controls the ways in which these brands are used moving forward.”
To read the full article, click here.