• The Indians May Win the World Series, But What Will Become of their Brand?
  • November 16, 2016
  • Law Firm: Mintz Levin Cohn Ferris Glovsky Popeo P.C. - Boston Office
  • The Cleveland Indians are back in the World Series for the first time in nineteen years, and with it have come renewed protests over the team’s name and Chief Wahoo logo, a depiction some consider a highly offensive caricature. This puts the team into the middle of a sustained and often emotional debate. Many people vigorously oppose the use of Native North American names and images as mascots and logos, saying they are demeaning and worse. The Chief Wahoo logo in particular stands out because it is a caricature.

    It’s no secret that brands are big business and that most established businesses, large or small, make great effort to create brand awareness through consistent use of logos with their name. The names and logos are usually legally protected with a registered trademark. Creating brand recognition takes time, so it is not something that should be changed often. When Tropicana tried to rebrand their orange juice packaging, sales plummeted and it was “a customer-relations fiasco” according to Advertising Age. A SmartPlanet article analyzed some failed attempts at rebranding. The Gap’s brief logo change is one for the history books. All these brands ended up returning to logos that were tried and true.

    All of this may soon be coming to a head.

    Last December, the United States Court of Appeals for the Federal Circuit decided a case called In re Tam, in which it overruled the Trademark Office’s refusal to register “The Slants” as a trademark for a music group, finding that the term was disparaging to individuals of Japanese extraction. In a 9-3 decision, the Federal Circuit ruled that by barring registration of such trademarks, the disparagement provisions of Section 2(a) violates the First Amendment’s protection of freedom of speech. Tacitly acknowledging that their ruling would likely unleash a torrent of trademarks that many consider offensive, the court concluded:

    Whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others. Even when speech “inflict[s] great pain,” our Constitution protects it “to ensure that we do not stifle public debate.”

    The Trademark Office was widely expected to, and last month did, ask the Supreme Court to review the Federal Circuit’s decision in In re Tam. In a related move, Pro-Football, Inc. took the unusual step of asking the Supreme Court to hear its appeal of the federal district court decision cancelling six registrations for the Washington Redskins trademarks - which has not been ruled upon yet by the Court of Appeals - as part of the Slants appeal.

    The Slants and Redskins cases both turn on the “disparaging” clause of Section 2(a). But if the Supreme Court decides to take on one or both of these cases, the statute’s bar on “immoral” and “scandalous” marks could easily be addressed at the same time: the constitutional issues are pretty much identical. In the meantime, the Trademark Office - presumably seeking to avoid getting itself into any more controversy - has announced that action on applications that raise any of these Section 2(a) issues will be indefinitely suspended pending further court action.