The MLB team in Cleveland has finally decided to stop wearing "Chief Wahoo," a caricature of a Native American, on their uniforms. The change will happen in 2019. Interestingly, however, the team told ESPN that it "will still sell merchandise featuring the mascot in Northeast Ohio" because "[t]he team must maintain a retail presence so that MLB and the Indians can keep ownership of the trademark."
Is continuing to cater to the fans of Chief Wahoo really necessary for trademark purposes? Well, maybe so! If the owner of a trademark intentionally stops selling goods and services under the mark, it "abandons" the mark. At that point, there is nothing to prevent someone else from beginning to use it on their goods and services. Someone who abandons a mark cannot sue to stop someone else from using it.
The move also comes at a time when federal trademark protection for offensive branding is actually at an all-time high. The recent Supreme Court decision in Matal v. Tam establishes that the Trademark Office cannot refuse trademark registration simply because a mark is deemed crude or offensive, including racially offensive. The provision of the Lanham Act allowing such rejections was held unconstitutional. So it is now easier than ever for someone to swoop in and file an application to federally register this offensive and disparaging mark. Indeed, there may even be a race to claim it.
Is this is a trademark-savvy move to prevent misuse of the logo by third parties, or is it a trademark-savvy excuse to keep selling Chief Wahoo merchandise to his die-hard supporters with a wink and a nod? Oddly, the result is the same either way – the team must continue to actually sell this offensive logo, while at the same time announcing an end to it.
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