- Hi everyone,
I'm attorney Aiden Durham with 180 Law Co.
in Denver Colorado,
and you're watching, All Up In Yo'Business.
(upbeat music)
In this episode of All Up In Yo'Business,
I'm gonna talk a little bit about
the recent, legal issues regarding
the name of the Washington NFL team.
And tell you guys a little bit
about why from a legal standpoint,
there is a little bit of a trademark issue here.
And then also going to tell you guys a little bit
about trademark squatting.
But first, please be sure to like subscribe and share.
And, don't forget to check the description
for more information and resources to,
for example,
if you need help getting a registered trademark,
you can check out the details
for my all-inclusive trademark registration package,
called Brand Bombshell,
or if you're on a tighter budget
or one of these DIY wires,
check out brandish
which is my on demand online webinar,
that teaches you step by step,
how to get a registered trademark without a lawyer.
A'ight, so a big story in the news recently,
has been this issue concerning
the name of the Washington DC NFL football team.
They decided to change the name of the team
because the previous name was well,
it was outdated and offensive to large groups of people.
So, in the spirit of,
equality and not offending people,
they decided to change the name.
They were tossing around potential ideas like
the Washington red tails, the Washington road warriors,
the Washington red wolves, I believe was an option.
There are all these different ideas
kind of flying around,
and people were speculating that these were potential names
that the team was gonna go with.
Then, came this big story that,
(exclaims)
someone has already trademarked
all of those potential names.
And in fact it is true that one person,
one individual, has filed trademark applications
for something like 12 potential variations
of possible names for the Washington football team.
So, does this mean that the football team
is just completely SOL totally out of luck,
when it comes to using any of those names?
Cause that's what we've kind of
been hearing a lot in the news as,
well they were thinking about,
the red tails or the warriors,
but now they can't because these names are trademarked.
So is it really going to be an issue for the football team?
No, probably not.
Mainly because the guy who filed these applications
has already made it pretty clear
that he wants to give the trademarks
to the NFL team.
He's not putting up a fight about it.
So primarily, that's a big reason
why this isn't really gonna be a big issue
for the football team.
But that's certainly not the whole story.
So a little bit of background on trademark law.
In the United States and some other jurisdictions,
we follow the first to use role.
Trademark rights in the US,
are based on first use.
In many of them countries,
they go off a first to file,
which means that trademark rights are based off of the first
to file for a registered trademark.
And so, in they'll use a first to file jurisdictions,
whoever files the application first is the winner.
But in first use jurisdictions like the United it States,
the winner is the person who used
the trademark first.
First to use, regardless of if or when
a trademark registration or trademark application was filed.
And so, in those situations,
if a third party files a trademark application,
or gets a registered trademark for a trademark,
but you actually have first use over that trademark,
you can potentially petition to cancel
that trademark registration.
because overall, your rights are superior
based off of first use.
So, because of this trademark registration
and, trademark law and enforcement and rights,
aren't quite as black and white
as they might be in a lot of other jurisdictions,
because we're, it's a question of who used it first,
not necessarily who filed it first.
So often, if an issue arises,
the parties will have to,
produce documentation showing when they actually started
using the trademark in commerce first,
and there might be this disagreement
or issue of who actually has first use,
because we're not worried about who filed first.
So now I've discussed in previous videos
that you can file a trademark application on a one,
a current use basis,
which means that you're currently using
the trademark in commerce,
or, you can file it on a one beat intend to use basis,
which means that you're intending to use it.
But the really important thing to remember,
and this is going to a big,
this is gonna be a big thing you guys,
so make sure you write this down.
This is probably gonna be one of the most genius
and, thoughtful and incredible things I've ever said.
A trademark is not a trademark until it becomes a trademark.
Did you catch that?
A trademark isn't a trademark until it becomes a trademark.
With an intent to use or one B basis trademark application,
the trademark won't actually be registered unless,
or until the applicant actually starts using it in commerce.
There will be stages in the application process,
where the applicant has to submit proof
that the trademark's now being used.
And registration won't happen
until it's actually being used.
So, in other words, an intent to use trademark,
isn't really a trademark at all,
because it's not being used.
And you have to use a trademark to make it a trademark.
So now going back to the whole trademark issue,
with the Washington football team name,
if you do a little research or digging
on these applications,
you'll see that they're pretty much all filed
on a one be intent to use basis.
That means the applicant hasn't actually started
using the trademark yet.
Which means, they're not actually trademarks yet.
So, this idea of this other person trademarked
all these names and now the NFL
or that football team can't get to them,
is kind of off base because,
first of all, the person didn't trademark the names,
there are there's pending applications
for this trademark, but again
it's not a trademark until it's actually used.
So, it's just these pending kind of floating applications
that may or may not become registered.
So, in and of themselves,
these applications do very little
to prevent Washington from using any of these
potential names for the name of their football team.
For example,
if they started going off going by the Washington red tails,
and started using that trademark in commerce
before the applicant did,
then the a team could potentially oppose,
or somehow prevent those registrations
from actually going through,
if they were to go through in the end.
But the idea is that
if the football team actually starts using
the team name before this other person does,
the football team has the trademark first,
even though these applications exist,
they're not trademarks.
But the second issue here is,
what it actually means to file an application
on an intent to use basis.
And that's the part that really gets me steamed,
over news like this and stories like this.
When we're filing an intent to use
or one B basis application,
we have to certify like swear and promise and certify
that we have a bonafide intent to use the trademark
in the near future.
Actual bonafide like legitimate, good faith intent.
We are actually intending to use this trademark.
It doesn't mean we just have an idea,
or a concept for a business.
It means we're actually taking measurable steps
to start using this trademark in commerce.
We're promising that we're swearing
that in the trademark application.
Now, I am certainly not saying,
or trying to imply that the applicant,
who filed all these Washington red tails
and all these different variations,
all of those applications.
I'm not trying to say that,
this person didn't have a bonafide intent,
that very well could have been.
I'm just saying it's a little curious,
that this person suddenly in the beginning of July, 2020,
decided that they had a bonafide intent
to use Washington red tails,
Washington warriors, Washington red wolves,
all in connection with entertainment
and football games.
So, maybe there was a real intent there.
I just think it's a little strange that that intent,
suddenly popped up all around the same day,
when the news of the team wanting
to change their name came about,
and that this person has this bonafide intent
for all of these variations of the name,
but whatever, that's not the point.
This brings me to the idea of trademark squatting,
or like trademark trolls.
In a nutshell a person who,
tries to get a trademark,
solely for the purpose of getting money
out of somebody else.
So if you see that this other party
might be pursuing this trademark in the future,
or they might have an interest in this in the future,
filing an application or trying to get
that trademark registered first,
so that you can then sell it
to the other party or somehow make some money off of it.
That's essentially what I'm referring to,
when I say trademark squatting.
There are different variations of what people mean
when they say trademark squatting.
It comes up a lot in international trademark issues like,
with China, used to have a lot of
trademarks squatting issues.
But I'm referring specifically to this kind of a situation,
where someone files or tries to get a trademark registered,
solely for the purpose of preventing another person
or party from doing it or to try to extort
or get money out of them or something like that.
If you're hearing all this news,
about Washington football team and their name
and all the trademark issues,
and you're, if you're starting to get this idea
for a great new business venture,
where you buy up trademarks,
so then try to sell them later.
I'm here to tell that, don't do it.
Reason number one, not to do it,
It's not allowed.
Like I said, you are swearing and promising
and certifying and verifying,
that you actually have a bonafide intent
to use this trademark in the future.
When you submit your application,
making false or misleading statements,
or saying something that's untrue
on a trademark application,
is a federal offense and it can be punishable
by fines or imprisonment or both.
So it's an actual crime it's unlawful and illegal.
And so, that in itself should be hopefully
reason enough not to do it.
You can't, it's not allowed reason.
Reason number two,
it's probably not gonna work out
the way you think it will.
Like I said, a trademark, isn't a trademark
until it's a trademark.
So even if you, you don't get in any trouble
by lying or maybe,
not being completely truthful on the application,
you're still not gonna get an actual trademark registration,
unless you start using the trademark.
So if you're filing an application,
without the intent to actually use it
and go through with the entire
trademark registration process,
then in the end, you're not gonna end up with a trademark
that you can sell or, hold against somebody.
You're gonna end up with an abandoned trademark application.
So if I let's say I wanted to have a trademark registration
for something new,
but I get wind that some trademark troll
has already beat me to the punch
and has filed an application for it.
I'm not gonna be too worried about it.
I'm gonna file my application anyway.
My application will probably get suspended,
because of the prior pending application,
which just means the examining attorney's
gonna put mine on hold,
while they see what happens with this other
pending application, which is fine.
So they'll put my application on hold,
but then eventually, this other party
is gonna need to start proving
that they're actually using the trademark.
And if they don't,
then the trademark will be abandoned
and then they'll be out of the situation.
And my trademark registration will proceed as expected.
So I wouldn't pay someone anything for that.
If they're actually not gonna be using the trademark,
I'll just wait them out.
Cause they won't get a registered trademark
in the end anyway.
So, to summarize all of this,
does Washington's football team actually
have a trademark issue with regard to their name?
No, not really.
This was kind of just a popular news story,
certainly interesting.
Certainly an interesting thing for us to talk about
and interesting for me
because it lets me talk to everybody more,
about trademarks in a relevant situation
where people actually care.
But in the end, I'm pretty sure
that the football team is not gonna have
a problem using whatever variation
of the name they choose.
And can, or should you take a tip from this guy
who registered all these variations
of the football team, name.
And should you try to start profiting off of trademarks
in a similar way?
No, you shouldn't it's probably not going to work.
And even if it does, it's most likely illegal.
So there you go.
That's all for this episode folks drop a comment below.
Let me know what you think.
Like I said, don't forget to check the description
for links to additional information,
or if you wanna learn more
about my trademark registration services
or my DIY online course,
all of that and post in the description.
Thank you all so much for watching,
I'm Aiden Durham and I'll see you next time.
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