In recent months, there has been great speculation about the new name for the Washington Football Team. One of the main reasons owner Dan Snyder went with a temporary name is because it can be incredibly difficult to find a name you like that can be cleared from a trademark perspective with the USPTO. It’s especially important to ensure you do not infringe on another person’s mark as a high-profile organization. In order to pick a name that pleases fans and can be protected with a federal trademark, Dan Snyder will need to follow four important steps.
The 4 steps the Washington Football Team will take in finding a new name:
Step 1: Find a name they like.
The first step in the process of protecting a name is to pick a few that you actually like. This can be a really difficult step for business owners as they try to find something that properly represents their brand. As for the Washington Football Team, Dan Snyder has the additional pressure of satisfying the fan base.
Step 2: Run a thorough trademark search.
Once you have selected a few names that you like, the next step is to conduct a thorough trademark search. This involves federal, state, and common law searches.
A federal trademark search scours the government’s database for same and similar trademarks that could cause a problem for one of the names you selected. At this level, the Washington Football Team may face some issues because there have been many speculative filings made in anticipation of the team’s decision.
A state search consists of going through each of the 50 states and looking for any local names that might be similar to the one you have in mind. The Washington Football Team will need to ensure there are no local teams using a specific name before they attempt to trademark it, or they risk having a claim brought against them. Similarly, they will search amateur leagues that might be operating under a name without a trademark registration when performing a common law search. In the United States, you do not have to have a registered trademark to have rights, so there could be a team out there that has rights around a name that the Washington NFL team might want to use.
Step 3: Ensure domains and social media accounts are available.
If a name that Dan Snyder and company chooses can clear a trademark search, the next step is looking to ensure they can acquire domains and social media handles. This could include a sleuth program to reach out to domain owners and people that have social media handles to see if they could be transferred to the team.
As a matter of fact, the owner of the “washingtonfootball.com” had a domain that Dan Snyder came in and purchased for $10,000. He realized after the fact that that he probably could have gotten a lot more.
Step 4: Submit a trademark application with the USPTO.
The final thing the team will do is file a trademark application.
This step will be somewhat complicated because the minute they file an application with the USPTO, various individuals monitoring the database will see their filing. If Dan Snyder is hoping to keep the name under wraps for a while longer he might file the trademark offshore In other words, he could file the trademark in a country that does not have an electronically searchable database, like Jamaica, and then and submit it in the U.S. within six months of the foreign filing. This way, the team will get the priority date of the foreign filing and no one will have known about the new name beforehand.
Typically, when you file a U.S. trademark application, your trademark rights start the day you file that application. But in this case, you’re not filing a U.S. application, you’re filing one overseas.
Regardless of how they go about making the filing, submitting their trademark application will be the final step in attempting to secure their rights in the new team name.