A few weeks ago, the Cleveland Indians announced that they would discontinue the use of their Chief Wahoo logo in response to mounting pressure from Major League Baseball and from the public at large to abandon a logo perceived by many as not only archaic, but racist. (You may have noticed, too—maybe during the 2016 World Series—that the Indians quietly switched their primary logo from Chief Wahoo to a block letter C, although the Wahoo logo remained in use.)

However, it was also reported that while the Indians would discontinue official use of the logo—for example, on uniforms—the Indians would continue to sell merchandise featuring Wahoo, albeit in a low-key manner and not via their website. But why, you might ask, would they do so at all?

The answer lies in the fact that Wahoo—along with the block letter C, and numerous other names[1] and logos[2]—is a federally registered trademark owned by the Indians. Like other forms of intellectual property (patents and copyrights), federal trademark registrations offer the protection, by federal law, of your rights to use trademarks or service marks to identify your goods and services as yours. For example, federal trademark registrations protect the Indians against third parties who would sell knock-off, look-alike, or lower-quality merchandise—say, a cap or jersey—that might be confused with legitimate merchandise sold by the Indians themselves. Without these registrations, the Indians would not be prevented from using these marks—but they would not be able to use federal law to prevent others from using them as well.

If you’re wondering at this point why federal law doesn’t just prevent the registration of such potentially offensive marks entirely: it did … at least, until recently. The NFL’s Washington Redskins had several of their federal registrations cancelled in 2014 due to the disparaging nature of the term “redskin”; federal trademark law allowed refusal of registration of trademarks comprising “matter which may disparage … persons, living or dead … or bring them into contempt, or disrepute.”[3] However, this provision has since been found unconstitutional by the US Supreme Court—Simon Tam, an American musician of Taiwanese/Chinese heritage, tried to register the name of his band, The Slants—and was denied due to the history of “slant” as disparaging against Asian Americans[4]. Tam appealed the denial, and the Supreme Court agreed that the “disparagement” provision was a violation of his First Amendment rights.[5]

Unlike patents and copyrights, federal trademarks are a use-it-or-lose-it proposition. In other words, to federally register your trademark, you must use it in interstate commerce (that is, to sell goods and services)[6]. You can register a mark on the basis of good faith intent to use it, but you must follow that up with actual use. Discontinuing use of a mark with intent not to resume use, or three years of non-use, would result in abandonment of the mark.[7] An abandoned mark would pass back into the public domain, free for other parties to commence use and establish priority. Were the Indians to abandon use of the Wahoo mark entirely, they might face a scenario where they would be unable to prevent another party from selling Wahoo-branded merchandise. With this as an alternative, it is a little easier to see why the Indians might opt for limited use in commerce as a means of keeping their registration alive and effectively dealing with counterfeiters and infringers in court—if they didn’t, it’s not clear who (if anyone) would.

One last twist: the Lanham Act, the aforementioned trademark registration law, is of course a federal law—enacted by Congress in 1946 and signed by President Truman. As such, it defines “commerce” as “all commerce which may lawfully be regulated by Congress”— interstate commerce, as noted above. While Cleveland, Ohio sits on a Great Lake, it’s nowhere near a state border. So how hard would it be for the Indians to prove that minimal, non-Internet sales of Wahoo-branded merchandise qualifies as interstate commerce? As it turns out, not very: federal courts have found that just a few intrastate sales of branded baseball caps (within the state of Illinois) to out-of-state travelers (living in Wisconsin) is enough to qualify as “use in commerce” as defined by the Lanham Act.[8] As the Indians welcome visitors from around the country all season long, this shouldn’t be a problem.

Suiter Swantz IP is a full-service intellectual property law firm, based in Omaha, NE, serving all of Nebraska, Iowa, and South Dakota. If you have any intellectual property questions or need assistance with any patent, trademark, or copyright matters and would like to speak to one of our attorneys please contact us. 

[1] For example, the Cleveland Naps! The club was previously named for Hall of Fame second baseman Napoleon (Nap) Lajoie, but after he left in 1915 the team needed a new name. Legend has it that local sportswriters chose “Indians” to honor the late Louis Sockalexis, a Native American player for the Naps/Indians back in the 1890s, when they were called the Cleveland Spiders. The veracity of this story is disputed, to put it mildly. And yes, “Tribe” is registered to the Indians too—but only after sportscard company Upper Deck tried to register it first in 2007.

[2] For example, this very different letter C, seen on Indians uniforms in the mid-1970s.

[3] 15 USC § 1052(a).

[4] Which Tam was well aware of, it being his intention to “reclaim” the slur as a “badge of pride”.

[5] Matal v. Tam, 582 U.S. ____ (2017).

[6] 15 USC § 1051(3)(C).

[7] 15 USC § 1127.

[8] Christian Faith Fellowship Church v. Adidas AG, Appeal No. 2016-1296 (Fed. Cir. 2016), citing Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662 (Fed. Cir. 1991) and Wickard v. Filburn, 317 U.S. 111 (1942).