Washington Commanders: So You’re Saying There’s a Chance?May 30, 2023

“Registration of the applied-for mark is refused” are not exactly words a trademark applicant wants to hear from the USPTO. But are they as daunting as they sound?

Over the past week, various news outlets have been reporting how “the Washington Commanders’ trademark has been denied by the USPTO” and asking questions such as “What’s next for the franchise?” and whether there is a “New name on the horizon.” As with all clickbait journalism, however, the truth is far less dramatic.

Yes, the Washington D.C. NFL team now known as the “Commanders” had four trademark applications refused registration by the USPTO last week (Serial Nos. 97/280,174; 97/249,449; 97/249,443; and 97/249,440). The basis for these refusals was in part because of a likelihood of confusion with pre-existing trademark registrations and applications. This is of course not ideal for the Commanders, but it is certainly not unusual. In fact, it is a very common occurrence when filing a trademark application and something trademark practitioners deal with quite often.

Notably, the USPTO’s refusal was in the form of a “Nonfinal Office Action.” As the name implies, a trademark applicant is able (and generally expected) to respond to such a refusal and make a case for why registration of the trademark is in fact proper. Success in this regard depends largely on the specific facts of each case. If an applicant can persuasively demonstrate that a consumer is unlikely to be confused by registration of the mark in question, registration may still be granted. It is simply part of the negotiation that is trademark prosecution.

So will the Washington Commanders be looking for a third name in as many years? I wouldn’t bet on it. Rather, they will take the normal next step and respond to the Nonfinal Office Action, attempting to distinguish the marks in question. Even if they are unsuccessful, they have other alternatives at their disposal (such as approaching the owners of the preexisting marks and attempting to come to an agreement—something that shouldn’t be too hard with the resources at Washington’s disposal). In other words, this game isn’t over—we’re just finishing the first quarter.

Nicholas J. Krob is an Associate Attorney in the TrademarkLicensing, and Litigation Practice Groups at McKee, Voorhees & Sease. For additional information, please visit www.ipmvs.com or contact Nicholas directly via email at nicholas.krob@ipmvs.com.

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