Is Your Favorite Team Breaking the Law?: Trademark Battles in the Sports

Is Your Favorite Team Breaking the Law?: Trademark Battles in the Sports

by Stephanie Morrow, June 2010

Sports fans are passionate about their favorite teams and often identify with the players as if they know them personally. And, it's not just the athletes that help fans identify with their favorite teams; team mascots are as identifiable— if not more so—than the players themselves, and they give an important face to the team.

The best means of protecting a mascot is trademarking it. Trademarks protect words, names, sounds, colors, and symbols (such as sports mascots) used in commerce to distinguish goods and services from one business another. From the roar of the MGM lion, to the Nike “swoosh,” or the Phillie Phanatic, these are brand identities that are important in marketing a specific product or service and, in turn, are protected under trademark law.

Mascots have become a staple in sports history. For instance, the San Diego Chicken—who has represented the San Diego Padres since 1974—has been so successful in entertaining fans that he was even named by Sporting News in their article, “Top 100 Most Powerful People in Sports for the 20th Century.” The fame of this popular chicken is not unique; the Philadelphia Phillies' beloved Phillie Phanatic is one of three mascots whose costume is in the Baseball Hall of Fame. And, although controversial over the years, the Cleveland Indians' “Chief Wahoo” has been known as one of the most famous mascots of all time since his first appearance in 1947.

However, whether they have been seen as politically incorrect symbols or in some instances, shown to behave in an excessively violent manner toward other lovable known characters, these trademarked symbols certainly have had their share of difficulties as well. In addition, in the age of the Internet, many individuals may not be aware that reproducing a mascot—whether it is on a personal web page or on a business site—is trademark infringement. All an individual needs these days is a computer and some design software, and—before you know it—he or she is able to produce and sell unlicensed merchandise of sports characters.

Universities Fight Trademark Infringement

Colleges and universities have been fighting trademark infringement, which costs the schools millions of dollars in lost licensing fees, for years. For example, Miami University sued a bookstore for using its Redhawk trademarks in bookstore advertising materials. Similarly, The University of Cincinnati threatened a high school with legal action if it did not stop using a logo that was extremely similar to the university's Bearcat.

Approximately 200 colleges and universities are members of the Coalition to Advance the Protection of Sports Logos, a group founded in 1992 by the numerous leagues, including the NCAA. The group has been successful in helping attain more than 2,300 arrests and confiscating $175 million in illegal merchandise.

San Diego Chicken vs. Barney

A trademark does not always serve as protection of a beloved figure, and that was seen in a battle between the well-known San Diego Chicken and the famous purple dinosaur, Barney, from the long-running PBS children's show of the same name. The famous chicken entertained audiences at Padres games by dancing and fighting with a Barney-like character, including an act of tackling the dinosaur, wrestling him to the ground, and standing over him with one foot on Barney's chest while the chicken flexed his muscles. 

Although this parody was seen as humorous by fans, the firm that owns the intellectual property rights to Barney— Lyons Partners—did not see the humor in the act. The company filed a suit against Ted Giannoulas, who plays the chicken character, for copyright and trademark infringement of the Barney character. However, a federal judge in Ft. Worth threw out the suit, stating that the San Diego Chicken's sparring match with a Barney look-alike does not infringe on the purple dinosaur's trademark.

The Washington Redskins Protect Native American Mascot

Probably one of the most famous trademark cases was against the name and mascot representing the Washington Redskins. The football team was challenged in 1992 by a group of Native Americans, stating that the Washington Redskins name was so offensive that it did not deserve protection by a trademark. The sports team had been called the Redskins since 1933, when it was then housed in Boston. The team later became the Washington Redskins in 1937, when the team moved west. 

A federal court ruled that the group representing the Native Americans waited too long, and thus they were denied under the “Doctrine of Laches.” Basically, there is a statue of limitations stating that after an offensive act has been performed, the parties harmed must file their lawsuit within a specific time period. The Washington Redskins' name and mascot were trademarked in 1967, 25 years before the group representing the Native Americans filed their dispute. The US District Court ruled that the gap between the trademark and the official complaint was too wide, and the Supreme Court agreed.

The Washington Redskins are not the only team that has had problems with a Native American nickname and mascot. When the 1995 World Series found the Atlanta Braves facing the Cleveland Indians, American Indian Movement leaders protested both the Cleveland Indians' Mascot “Chief Wahoo” and the Atlanta Braves' “tomahawk chop.” That game also spurred lawsuits against other mascots, including the Kansas City Chiefs. 

Sports Sounds in Danger?

As seen with the Braves' tomahawk chop, even sounds made by sports fans can be in danger.  2010 Super Bowl champions, the New Orleans Saints, had some controversy over the phrase “Who Dat,” a popular cheer by Saints fans. The National Football League (NFL) sent cease-and-desist letters to some Louisiana t-shirt-makers, citing trademark infringement of the phrase. However, the state's attorney general ruled in Febrary 2010 that local t-shirt-makers did not need permission to sell t-shirts with the popular phrase as long as they did not make any other reference to the Saints or the NFL.

Trademark Protection

Trademarks protect everything from Coca-Cola's bottle shape to the Detroit Tigers' “Paws,” and filing a trademark offers the holder protection and peace of mind. If you have a logo or tagline you'd like to trademark, LegalZoom can help.