BY JOHN FARMER Special Envoy
It’s as inevitable as the sunrise that a major rebrand will bring out comedians and critics alike.
When the NFL’s Washington football team announced their new name would be Commanders, Twitter memes arose. The most popular riff was calling the team the Commies, not least because the team’s burgundy and gold colors are close to the yellow and gold of the flag of the former Soviet Union.
A Cowboys fan joked that the stadium in Washington would be called “Commode”. An Eagles fan observed that the new W logo looked like a taco holder.
Funny. But how does the new name fare from a legal standpoint?
When evaluating a potential new brand (a new name for a company, product or service), three questions are considered: What is its conceptual strength? How likely is it to be federally registered? What is the level of risk of infringement that would result from its use?
Conceptual strength is measured on a continuum. The weakest name you can choose is a generic name for the good or service, like calling an automobile a “car.” Generic names cannot be trademarks.
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Purely descriptive terms are then the weakest, such as “US News and World Report”. You may have trademark rights in a descriptive term once the public recognizes it as referring to you, but that may be difficult to obtain. Descriptive marks are difficult to defend against others using similar names.
Stronger marks are suggestive, fanciful or arbitrary.
A suggestive mark evokes a feeling about the product or service without naming it, such as “Champion” for sporting goods. An arbitrary trademark is an English-language word that has nothing to do with products or services, such as “Apple” for computers. A fancy brand is a made-up word, like “Exxon.”
“Commanders” gets good results. It’s suggestive. It evokes military might, like the Pentagon and the President as Commander-in-Chief.
Will the team be able to obtain federal trademark registration for the Commanders name?
There are at least 23 benefits of signing up. Never choose a new name that you cannot federally register.
To assess registrability, a trademark attorney conducts an authorization search to assess whether the proposed trademark is too similar to previously applied for or already registered trademarks for the same or similar goods or services. With marks, as with horseshoes and hand grenades, getting too close can kill you.
If two marks are confusingly used for the same or related goods or services, the second to use its mark is an infringer and cannot be registered.
The Washington football team is facing some issues here. There are near-approved federal trademark applications for the name “Commander’s Classic” for a college football game between two U.S. military academies and fan apparel. The inaugural game was played last season between the Army and Air Force, and another game is scheduled for next fall.
Also, many trademark registrations use the word “Order” for clothing. Naturally, the Washington football team wants to register “commanders” for fan clothing items.
Louisiana’s Duck Commander Inc. – the people behind the Duck Dynasty brand – has the most extensive record series.
The Federal Trademark Office will likely initially deny applications to register the “Commanders” trademark of the Washington football team because of these prior applications and registrations.
But the Washington football team probably anticipated this problem. Perhaps he obtained consent from Commander’s Classic and Duck Commander to register his new name as a trademark.
There are also other tricks that a savvy trademark applicant can use if they have a big legal budget.
Finally, is the Washington football team at risk of being sued for trademark infringement because of its new name?
This factor examines whether real-world confusion is likely, not just whether there is a hypothetical conflict based on the similarity of the marks and the goods or services in their registrations and applications.
Here, the Washington football team is in top form. In the real world, people are unlikely to think the team is affiliated with Commander’s Classic or Duck Dynasty.
Other than these, I haven’t seen any other likely conflicts in a modest search.
San Antonio briefly had a professional football team called the Commanders, but it no longer exists and therefore is not a problem. The name “Commanders” is used for a few youth football teams across the country, but no one will be confused by that.
Finally, the Washington football team got the domain name Commanders.com before announcing his name.
He is already using this domain name for a website promoting the new team name. Getting a domain name for a big brand is important.
On this score, the Washington football team did not escape the ball.
John B. Farmer is an attorney with Leading-Edge Law Group PLC, specializing in intellectual property law. He can be reached at www.leadingedgelaw.com.