It’s as inevitable as the sunrise that a major rebranding brings out comedians and critics.
When the NFL’s Washington Football Team announced its new name would be the Commanders, Twitter memes gushed forth. The most popular riff was to call the team the Commies, especially because the team’s burgundy and gold colors are close to the yellow and gold on the flag of the former Soviet Union.
One Cowboys fan quipped that Washington’s home stadium would be called “the Commode.” An Eagles fan observed that the new W logo looks like a taco holder.
Funny. But how does the new name grade out from a legal perspective?
When evaluating a potential new trademark (a new name for a business, product, or service), three issues are considered: What is its conceptual strength? What is the likelihood of being able to federally register it? What is the level of infringement risk that would arise from using it?
Conceptual strength is measured on a continuum. The weakest name you can pick is a generic name for the good or service, such as calling an automobile a “car.” Generic names cannot be trademarks.
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Merely descriptive terms are next weakest, such as “U.S. News and World Report.” You can have trademark rights in a descriptive term once the public recognizes it as referring to you, but that can be hard to achieve. Descriptive trademarks are hard to defend from others using similar names.
Stronger trademarks are suggestive, fanciful, or arbitrary.
A suggestive trademark conjures 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 the goods or services, such as “Apple” for computers. A fanciful trademark is a made-up word, like “Exxon.”
“Commanders” scores well. It’s suggestive. It connotes military power, such as the Pentagon and the President as Commander in Chief.
Will the team be able to get a federal trademark registration for the name Commanders?
There are at least 23 advantages to registration. Never pick a new name you can’t federally register.
To assess registrability, a trademark attorney performs clearance research to evaluate whether the proposed trademark is too similar to trademarks previously applied for or already registered for the same or similar goods or services. With trademarks, as with horseshoes and hand grenades, being too close can kill you.
If two trademarks are confusingly similar and are used for the same or related goods or services, the second to use its trademark is an infringer and cannot be registered.
The Washington Football Team faces issues here. There are nearly approved federal trademark registration applications for the name “Commander’s Classic” for a college football game between two U.S. military academies and fan clothing items. The inaugural game was played last season between Army and Air Force, and another game is scheduled for next fall.
Also, many trademark registrations use the word “Commander” for clothing. Naturally, the Washington Football Team wants to register “Commanders” for the fan clothing items.
Duck Commander Inc. of Louisiana — the folks behind Duck Dynasty brand — owns the most prominent series of registrations.
The federal Trademark Office probably will initially reject the Washington Football Team applications to register the “Commanders” trademark because of these prior applications and registrations.
But the Washington Football Team likely has anticipated this problem. Perhaps it has secured the consent of the Commander’s Classic and Duck Commander to register its new name as a trademark.
There also are other tricks a savvy trademark applicant can employ if it has a big legal budget.
Finally, is the Washington Football Team at material risk of being sued for trademark infringement because of its new name?
This factor looks at whether real-world confusion is likely, not just whether there is a hypothetical conflict based upon the similarity of the trademarks and the goods or services in their registrations and applications.
Here, the Washington Football Team is in good shape. In the real world, it’s unlikely people will think that the team is affiliated with the college football Commander’s Classic or Duck Dynasty.
Besides those items, I didn’t see other likely conflicts in a modest search.
San Antonio briefly had a professional football team called the Commanders, but it’s defunct and, thus, not a problem. The name “Commanders” is used for a few youth football teams around the country, but no one’s going to be confused by that.
Finally, the Washington Football Team secured the domain name Commanders.com before it announced its name.
It already uses that domain name for a website promoting the new team name. Getting a domain name for a big brand is important.
On that score, the Washington Football Team didn’t fumble the ball.
John B. Farmer is a lawyer with Leading-Edge Law Group PLC, which specializes in intellectual property law. He can be reached at www.leadingedgelaw.com.
