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.
KMK Law articles and blog posts are intended to bring attention to developments in the law and are not intended as legal advice for any particular client or any particular situation. The laws/regulations and interpretations thereof are evolving and subject to change. Although we will attempt to update articles/blog posts for material changes, the article/post may not reflect changes in laws/regulations or guidance issued after the date the article/post was published. Please consult with counsel of your choice regarding any specific questions you may have.
© 2023 Keating Muething & Klekamp PLL. All Rights Reserved
- Intellectual Property
- Social Media
- Medical Marijuana
- Trademark Litigation
- United States Patent and Trademark Office
- Craft Brewing
- Trademark Trial and Appeal Board
- Federal Trademark
- Amazon's Brand Registry
- Registered Trademark
- Medical Cannabis Dispensaries
- E-Discovery Case Law
- Drug Enforcement Agency
- Uniform Trade Secrets Act
- Regulation Fair Disclosure
- Securities Law
- Securities Regulation
- Trademark Abandonment: Lessons from The Real USFL v. Fox Sports
- Generic.com Terms Are Not Per Se Generic
- EU Trademarks Post-Brexit: Now What?
- Don’t end up on The Elf on the Shelf’s naughty list!
- Stay Out of Trouble With the Federal Trade Commission
- "Aloha Poke": Social Media and Consumer Perception are Part of the Trademark Enforcement Equation
- Could Any Old Yahoo Nab Chief Wahoo?
- Trademark Registration Practice is Officially…umm…Well, You’ll See
- Booze is Booze, Right? Not so fast...
- Enroll in Amazon’s Brand Registry 2.0… But Only if You Own a Registered Trademark