Weekly IP Buzz for the Week Ending August 7, 2020

August 10, 2020 Darin M. Klemchuk

In this week's post, we see how trademark assignments should be promptly recorded with the USPTO to provide public notice and prevent the potential for losing such rights.

Plus, as the Washington Football Team seeks to rebrand, it is important to consider public opinion, third party use/rights, options for challenging third party rights claims, and obtaining a name that should last the test of time.

Trademark Assignment Recordation: Don’t Lose Your Rights

In previous posts, Brian Casper discussed some of the technicalities, principles, and perils associated with licensing and selling trademarks. Once you get the assignment right, there is still one final formality that you should follow—trademark assignment recordation with the USPTO.

The benefit of recording the assignment is that it can no longer be assigned to someone else. Additionally, if it was paid for with “valuable consideration”—i.e. real money—any prior unrecorded assignments will be voided by the recorded assignment as long as it was assigned without any notice of a prior assignment and is recorded within 3 months of the assignment.

Read the full article here.

Redskins No More | The Washington Football Team Rebrand: The Journey Ahead

Washington D.C.’s NFL team has had a long battle with defending and maintaining its brand, ultimately culminating with a decision to drop the Redskins’ name and look to a brand name change. With the most recent national uproar against racism, the NFL’s Washington football team’s rebrand became inevitable.

In 2014, after an 8-year battle against a cancellation action, the United States Trademark Office (“USPTO”) cancelled six trademark registrations owned by the Washington team on the basis that the word “Redskins” was disparaging to Native Americans. Even then, the team owner, Dan Snyder, held on to the name, pledging never to rebrand. The team was left to protect its rights in the name only via state and/or a common law basis.

However, with the changing times, heightened sensitivities, a global pandemic, and a national outrage against racism, large companies began backing out of sponsorships and ventures including any third parties with even a seemingly potential for appearing to have racist ideals. Therefore, the decision for the Washington football team rebrand was finally made, whether willingly or not.

But, why have they decided on the generic “Washington Football Team” brand for the 2020 season? It appears the team is carefully and smartly weighing options before moving full force ahead, to help prevent another long battle surrounding its brand name.