Sports Q&A - Launching a new team brand – what do I need to consider?
17 August 2020
The BlackLivesMatters movement has led to sports clubs reconsidering the appropriateness of their team names, mascots and nicknames.
Exeter Chiefs (England, rugby union) have resisted the pressure to change their name, although they are retiring the team’s “Big Chief” mascot. Others, including the Washington Redskins (USA, NFL) and Edmonton Eskimos (Canada, CFL), have taken the significant step of confirming that they will rename their teams.
The process of choosing a new name and logo can be hugely contentious, especially when fans are (rightly or wrongly) attached to the existing brand. In some cases those brands come with decades of history attached to them. The loyalty, emotions of championship wins and losses, the past superstars, and the 'essence' of what makes a team are all captured in the team brand. The team's value and goodwill manifests itself in the brand and is what drives sponsorship and merchandise sales. This intangible 'brand equity' can contribute significantly to the value of teams, in some cases to the tune of billions of dollars. Any change is therefore a serious undertaking. However, aside from it just being the ‘right’ decision, if your name alienates fans and sponsors, then making the change is commercially sensible too.
The process of protecting a new brand can involve multiple legal issues. The team now provisionally known as the Washington Football Team has found this, with an individual himself already owning trade marks for 44 potential replacement names in the US.
So, whatever the reason is for creating a new brand, it’s important to take a robust legal approach before launching it:
Choosing a distinct brand
In general, the more unique a name and logo, the 'stronger' it will be from a legal and trade mark point of view. A distinctive brand will therefore be easy to protect and briefing your creative teams on this from the outset can reap dividends in the long run. One of sports’ newest teams, the Seattle Kraken NHL team seems to have taken heed of this, at least in part.
Kraken is not a made up word (although made up words are generally a good thing from a trade mark perspective). A Kraken is apparently a mystical sea monster, but the fact that many people will not have heard of it, and (to our knowledge) no other teams are using it, is a big tick for brand protection. On the other hand the Kraken's new logo is a stylised 'S' which takes inspiration from historic ice hockey logos used in Seattle. Aside from ensuring there is no copyright infringement when taking inspiration from previous logos, an 'S' is clearly not, in itself, particularly unique. The Kraken's rights in its 'S' logo will therefore likely be relatively narrow and will be limited to the specific stylisation and close imitations.
Clearance searches: check that your new brand is 'clear' for use.
By checking trade mark registers and other sources, it’s possible to establish whether others are already using a brand similar to yours. No search is likely to be 100% comprehensive but you can give yourself confidence that there are no similar brands which could prevent the use of your new brand. You'll want to run these checks for all countries in which you're likely to use the brand, checking for identical or similar uses.
Assessing the results is a skilled process. In sport, many names, such as 'United', 'City' and various animal names are commonly used in combination with a place name, and existing clubs will not normally be afforded any exclusivity in the former. However other names may be borderline, especially where existing clubs have significant fame - see for example the battle between Inter Milan and Inter Miami which we've written about previously here.
Names are relatively easy to search but logos are harder. The Kraken, for example, will have needed to search for all 'S' logos, and probably serpent and snake logos. It is possible to do this using various software packages, but if your logo is completely abstract, then it will be harder. Again, analysing the result will take time and requires skill.
Given what we say above, and that undertaking these searches can be costly, prior to commencing searches it's worth thinking carefully about your search strategy. You'll need to consider your budget and intended scope of use (both in terms of products and services that the brand will be used for, and the territories in which it will be used).
Addressing potential issues
Having undertaken your searches you're likely to have identified some similar brands that could block your use. You may need to investigate these further and/or enter into negotiations with the relevant owner. Options can range from purchasing the prior rights, agreeing a 'co-existence' agreement, challenging the validity of the existing rights, or opting to 'wait and see', effectively putting off the issue to the point when (if) the relevant owner challenges your trade mark application and/or use. Deciding which is the right course of action will depend on a variety of options, including your risk appetite, as the last option could, in a worst-case scenario, result in you having to amend or even drop your re-brand.
Trade mark registration strategy
Like for your search strategy, your trade mark registration strategy will depend on how and where you propose to use the brand, and your budget.
Which versions of your logo to register, whether to register it with or without the name, whether to register a plain and/or stylised version of the name... you'll want to balance comprehensive protection against wasting costs. Getting good advice on your registration strategy can save you significant sums.
Other considerations include when to register - if secrecy is a big issue you may need to time your applications with the launch (as trade mark applications are made public). You are also likely to want to take advantage of the six month 'priority period'. This allows you to register in one territory, and gain the benefit of that application date by claiming its priority when applying in other territories (provided you apply within 6 months).
Another key question is whether it is best for you to apply directly in the relevant territory, or via the 'Madrid Protocol' which allows you to designate a large number of territories via a single application. There can be pros and cons of each and which is most suitable will depend upon your ultimate goal.
In addition to registering trade marks you will want to consider acquiring relevant domain names - not just the domain you want to use but defensive domains to prevent domain squatting causing you issues in the future. Registered designs can also be a useful additional right for logos, mascots and/or and team shirts. Unlike trade marks (that can be renewed indefinitely), registered design protection is limited (for example to 25 years for a UK or EU ‘community’ registered design), however registration and enforcement can be simpler. Applications can also be made in a way which ensure the application remains confidential for a period so you can get protection for your new brand, yet also keep it out of the public domain, prior to launch.
Your old brand
Finally, if you’re re-branding, it’s also important to decide what to do about trade mark registrations you have for your ‘old’ brand. If you are planning to completely abandon your historic mark, then it may be appropriate to let most if not all of your existing registrations lapse. However, there is likely to be some value in the historic mark, and ‘classic’ lines of merchandise can prove lucrative. It would therefore be sensible to undertake a strategic review of your existing registrations to decide which should be maintained, and which you can safely allow to lapse.
As you'll gather, the legal groundwork behind a brand launch can be complex. Of course, our experienced trade mark team can help you navigate this, ensuring you get the protection you need in the most efficient way. Give us a call if you need assistance on any trade mark or IP questions. Our IP360 team have you covered!