To say that the last few years have not been kind to the NFL’s Washington DC-based franchise would be an accurate statement. From ownership squabbles and subpar team performances (Go Birds!), to the years-long rebrand process that grabbed national headlines and drew the ire of many sports fans, much has been left to want for Washington and its fans. As a new ownership regime now takes the helm, the fanbase has desperately been looking for more reasons to be hopeful about its future. Unfortunately, it seems that Washington fans may need to wait a bit longer, as the USPTO recently issued a nonfinal office action, denying the team’s application for the “Commanders” trademark.
Put simply, a nonfinal office action is an initial denial that the USPTO issues which points out issues or flaws in the application. These issues can be fairly minor, such as clerical mistakes, or they can be more significant, as is the case here. In the recent office action, the USPTO cited a likelihood of confusion with existing marks as its reasoning for the denial. For those that are not well-versed in trademark law, “likelihood of confusion” is the primary test that is used to determine whether someone has engaged in trademark infringement. With that in mind, a rejection based on a likelihood of confusion is no small hurdle to overcome.
The USPTO has cited multiple existing trademarks as being the cause for rejecting the application. Most notably the “Commanders Classic” which is an annual college football game between Air Force and Army. Not only does this trademark contain the word “Commanders” AND relate to the game of football, but this trademark is also already registered with the USPTO. This similarity may spell disaster for the Washington franchise.
So where does Washington go from here? You likely noticed that the USPTO refers to this denial as “non-final.” This is a big deal as it means that the rejection is not necessarily a death sentence for the team’s application. Washington now has a limited amount of time to respond to the application, arguing that no likelihood of confusion exists. This is a bit of an uphill battle given the similarities with the existing trademark, but it is an option nonetheless. Alternatively, Washington may attempt to work out an agreement with the owners of the existing trademarks. Such an agreement may allow for the trademarks to coexist without infringing on the rights of the other.
If the team chooses to argue that no likelihood of confusion exists, the application will return to the examiner who may either accept the argument or reject it once again. In the latter scenario, a final office action will issue, giving Washington one final opportunity to make its case. If Washington is still unsuccessful in arguing its point, the application will be considered abandoned and a lengthy appeal process will likely follow. Obviously, neither of these are good options. Additionally, the possibility of a trademark infringement lawsuit increases substantially if Washington is unable to obtain its registration. As mentioned, a trademark registration already exists for “Commanders Classic.” Not only may the owner of that trademark want to exercise its rights, the law may require them to do so as trademark owners have a legal obligation to police their trademarks.
Obviously, all of this is purely speculative as the initial office action only issued a couple of days ago. If I had to guess, I would say that the franchise pursues some sort of a coexistence agreement with the existing trademark owner since that would likely be the path of least resistance. If that fails, Washington would need to make the best argument they could against the denial in hopes of persuading the examiner that no likelihood of confusion exists. In the worst-case scenario where Washington fails at both endeavors, it may again have to pursue a rebrand to avoid a trademark infringement lawsuit. Right now, this is probably an extreme overreaction, however, there is technically a chance that this rejection could spell the return of the infamous “Washington Football Team” moniker, an outcome which would certainly be disheartening to an already suffering fanbase.
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