Will the Washington Commanders fumble their trademark? Lessons for businesses

Washington’s professional football team has a new name—the Commanders—and, if recent history is any guide, the potential for trademark headaches.

The Cleveland Guardians of Major League Baseball famously failed to clear the rights to their name with a Cleveland roller derby team before announcing its name change last year, leading to a lawsuit that was settled in November.

And the Commanders have had their own recent trademark issues. The U.S. Patent and Trademark Office canceled the trademark of a previous name the NFL team used for more than eight decades on the ground that it disparaged Native Americans. The PTO also rejected the team’s application to register its placeholder name, the Washington Football Team, because it was too generic and too similar to a preexisting application for “Washington Football Club.”

Neal, Gerber & Eisenberg partner Ian Block said that a business looking to register a valuable name usually performs a two-step search: a preliminary “knock-out” search of USPTO and relevant state registers for any exact matches, followed by a comprehensive search of news databases, domain names and web pages for both identical and similar marks. The latter search is usually performed by a professional third-party company.

But even with all that work, it’s virtually impossible to rule out 100% that somebody somewhere isn’t already using a mark in commerce. “You search it as best you can and vet it as best you can, and then balance the risk against how much you like the name,” said Block, who’s based in Chicago.

The Washington Football Team surfaced a slate of names that it was considering in the third quarter of 2021. That might have gotten the attention of owners of similar marks and given the team time for licensing negotiations ahead of this week’s announcement, Block suggested.

Clearing names for professional sports teams is extra challenging because of the relatively limited universe of popular names, many of which are already in use by professional or collegiate sports teams.

Block said his own review indicated that “Washington Commanders” is not registered with the USPTO, though “Washington Space Commanders” and “Washington Wolf Commanders” are taken.

Could the Washington Space Commanders could cause trouble for the Commanders? “It would depend in large part whether the Washington Football Team brand themselves in a way that connotes space as opposed to general military command,” Block said.

The team also should have taken care to get reasonable control over “Commanders”-related domain names and social media handles, Block said. Commanders.com was transferred last week to MarkMonitor, a company that safeguards domain names for large enterprises including many NFL teams, fueling speculation that Commanders was going to be the team’s choice.

“Once you’re locked into the name, it becomes more costly to acquire it from someone else,” Block said.