With Name Change, Redskins' In-House Counsel Must Consider Trademark Uses, Sponsorship Agreements
"In the sports world, particularly in the NFL, there is value and activation around a team's name and logo," Andrew Lee, a partner at Foley & Lardner in New York, said.
July 15, 2020 at 07:19 PM
5 minute read
As the Washington Redskins contemplate what to call themselves for the 2020-2021 season and beyond, its in-house counsel will have to consider how the name change will impact sponsorships and merchandising of vintage jerseys.
The team announced Monday that it will be retiring the Redskins name and logo and is in the process of coming up with a new name. The team's general counsel, Will Rawson, did not respond to a request for comment for this story. A spokesperson for the team said no one will be available to comment until the name-changing process is completed.
The rebranding process will be much like any other corporate name change, Andrew Lee, of counsel at Foley & Lardner in New York and former general counsel of the New York Jets, said.
"In the sports world, particularly in the NFL, there is value and activation around a team's name and logo," Lee said.
Legally, there is a good reason for not having retired the Redskins name and logo. The name and logo have been a trusted source to the consuming public, Lee said.
"But there's a historical meaning that predates that use and offends a growing segment of that consuming public, so the entity is also perceived as being a source or origin of that offense—a good reason to make a change regardless of whether the courts say you can keep the name as a registered trademark," Lee said.
Other teams that have been accused of using offensive Native American names have stuck with those names. A spokesperson for the Cleveland Indians referred Corporate Counsel to a statement made July 3, when the Redskins announced it was reviewing the name. The team said it recognizes the name is the most visible way it connects with the community. The statement said the team is committed to improving on issues of social justice.
"We are committed to engaging our community and appropriate stakeholders to determine the best path forward with regard to our team name," the Cleveland Indians said in the statement.
A spokesperson for the Atlanta Braves said the team has had a long-standing relationship with the Native American community and through its conversations with that community found "changing the name of the Braves is not under consideration or deemed necessary."
The other National Football League team with a Native American logo, the Kansas City Chiefs, did not respond to a request for comment.
Keeping a longstanding name does have benefits. The legal department may need to reevaluate agreements the team made with sponsors.
"Sponsors who are in the middle of deals are invested in the sponsorship agreement and process, not only financially but from the perspective of programming and logistics," Lee said. "Does the sponsor feel the assets that are going to be delivered live up to the assets that they signed up for in the original agreement?"
In this instance, Lee said, the decision to retire the name shows good faith to sponsors who, in large part, want to show they are on the side of social justice.
Even with the goodwill the team may develop with fans and sponsors from changing the name, the legal department will need to consider whether or not it will continue to hold onto the Redskins trademark for merchandising purposes.
"Are they going to abandon those rights for what could be vintage memorabilia?" Richard Assmus, a partner at Mayer Brown in Chicago, said.
There still may be a market for a John Riggins Super Bowl jersey, Assmus said. It is unclear if the team will continue to sell old jerseys to fans. If they do not, they risk losing the trademark and cannot enforce rights on counterfeit jerseys.
"In an ordinary name change, you might make some use of the old mark in the new one," Assmus said. "However, this was essentially a slur."
The team will also have to make sure the trademark can be used globally as the NFL has begun to gain traction overseas.
Assmus said there is irony in the U.S. Supreme Court making it easier to trademark offensive names and companies are now forced to contend with societal demands. In Matal v. Tam, the Supreme Court found Simon Tam, an Asian American, was allowed to trademark the name of his band, The Slants, even it if was offensive.
"I think there is a nice irony that a lot of the legal attempts to get the Redskins to change their name by trying to attack their trademark rights ultimately failed," Assmus said. "But it was a part of a broader societal change that made companies decide they can't afford to keep these types of names."
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
Not a Lexis Subscriber?
Subscribe Now
Not a Bloomberg Law Subscriber?
Subscribe Now
NOT FOR REPRINT
© 2024 ALM Global, LLC, All Rights Reserved. Request academic re-use from www.copyright.com. All other uses, submit a request to [email protected]. For more information visit Asset & Logo Licensing.
You Might Like
View AllGC Pleads Guilty to Embezzling $7.4 Million From 3 Banks
GC With Deep GM Experience Takes Legal Reins of Power Management Giant
2 minute readUS Reviewer of Foreign Transactions Sees More Political, Policy Influence, Say Observers
'Unlawful Release'?: Judge Grants Preliminary Injunction in NASCAR Antitrust Lawsuit
3 minute readTrending Stories
- 1Tuesday Newspaper
- 2Judicial Ethics Opinion 24-85
- 3Decision of the Day: Administrative Court Finds Prevailing Wage Law Applies to Workers Who Cleaned NYC Subways During Pandemic
- 4Trailblazing Broward Judge Retires; Legacy Includes Bush v. Gore
- 5Federal Judge Named in Lawsuit Over Underage Drinking Party at His California Home
Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
Featured Firms
Law Offices of Gary Martin Hays & Associates, P.C.
(470) 294-1674
Law Offices of Mark E. Salomone
(857) 444-6468
Smith & Hassler
(713) 739-1250