You Can Go Home Again
What happens to a professional sports team’s trademark when a franchise leaves town, decides to rebrand and change its name, and the jilted city wants to bring home its former team by reviving the original trademark?
Stay with me.
A recent New York Times article suggests one potential scenario.
In 2004, the EXPOS baseball club played their final season in Montreal and moved to Washington D.C. to become the NATIONALS. The NY Times reports that over a decade later Major League Baseball may be coming back to Montreal:
“… during the past three years, and in particular the past several months, a series of events has led people in Montreal to embrace the idea that baseball might be coming back. It is a hope so strong that it is again possible to buy Expos merchandise in airport shops, and to dream of a day when a major league club will again call Montreal home.
“I don’t think it is a matter of if,” said Warren Cromartie, a former Expos outfielder who has taken a leading role in efforts to bring a team back to Montreal. “It is a matter of when.”
If a major league club does in fact return to Montreal, can the team be called the EXPOS and use the team’s logos, colors and history?
The short answer is … it probably can. The circumstances surrounding the Montreal EXPOS relocation to Washington D.C. are complex and controversial. If you are interested in reading about it, check out this 2004 Washington Post article by Steve Fainaru. The upshot is an entity formed by Major League Baseball took control of the EXPOS franchise, including its trademarks, and has maintained those marks ever since.
There is precedence for a professional sports team to relocate and reappear under its original name (with a new ownership group). In a move equally as controversial and perhaps more contentious than the EXPOS relocation, the NFL’s Cleveland BROWNS left for Baltimore in 1996 and became the RAVENS. The City of Cleveland sued to stop the move. Ultimately, it wasn’t able to keep the franchise but it did retain the Cleveland BROWNS trademarks and legacy. Three years later the Cleveland BROWNS were “reactivated” as an expansion team. A review of the U.S. Patent & Trademark Office (USPTO) database shows how the trademarks were transferred. The Baltimore RAVENS assigned the Cleveland BROWNS trademarks to a trust naming NFL Commissioner Paul Tagliabue as trustee, who then transferred the marks to the new BROWNS franchise.
More recently, a relocation and revival took place with the NBA’s Charlotte HORNETS franchise, which had moved to New Orleans as the HORNETS then were renamed the PELICANS, and after the NBA expanded back to Charlotte with the BOBCATS, the new BOBCATS franchise decided to revive the prior HORNETS name. Needless to say, this has resulted in a convoluted chain of title – as reflected in the team’s response to an inquiry from the USPTO:
The chain is important because it tracks ownership and assignment of all right, title and interest in a mark, including priority of use and goodwill, the sine qua non of any trademark transfer. A transfer of a mark without the underlying goodwill is an “assignment in gross” (or invalid transfer) and can result in a loss of rights. See 15 U.S.C. § 1060.
Trademark goodwill is a vague concept I previously wrote about here: it refers to an intangible asset that adds value to a brand … it’s the history, reputation, consumer loyalty and associations created by a trademark that exists beyond the mark itself and any tangible business assets. Here’s a link to a quote from Siegrun Kane describing trademarks “as symbols of goodwill. The value of this goodwill increases with length of use, advertising, and sales. Trademarks used for a long time on successful, highly advertised products have developed tremendous goodwill.”
For a professional sports franchise, goodwill derives from a team’s name, logos, colors, players, personnel, history, wins, losses, championships, banners, trophies, retired jerseys, club/player statistics, records and any other distinctions and memorabilia … all of which creates fans and loyalty and an intangible asset that isn’t easily quantified or forgotten when a team abandons a city.
Typically, the trademark follows the franchise – when it relocates, the name and history remain intact. The Brooklyn DODGERS are now the Los Angeles DODGERS and they honor and recognize their Brooklyn heritage as part of the DODGERS franchise (BROOKLYN DODGERS is a registered trademark owned by the L.A. DODGERS franchise). However, keeping a prior city’s nickname can lead to some incongruous team names. For example: Los Angeles LAKERS, originally from Minneapolis, Minnesota, the land of 10,000 lakes, is an odd nickname for a team in Los Angeles, California, currently in the midst of the worst drought in state history. Utah JAZZ — initially from New Orleans, the birthplace of jazz — is another example.
There are two factors at play in deciding whether to rebrand after relocating:
(1) to avoid incongruity and adopt a name relevant to the new location; and/or
(2) so the original city and team fans can keep the goodwill and preserve the name should a team come back.
Preserve the name is precisely what the city of Seattle, Washington has tried to do with the SONICS/SUPERSONICS trademarks.
In 2008, the Seattle SONICS relocated to Oklahoma City to eventually become the THUNDER but only after settling a lawsuit brought by the City of Seattle. The settlement agreement allows a new NBA team in Seattle to restore and reacquire the SONICS trademarks if approved for a franchise. In the meantime, the trademarks remain with the THUNDER franchise and the SONICS trophies, championship banners and retired jerseys are in a museum in Seattle. Here’s the key provision in the settlement agreement:
Note that the agreement would require both franchises to acknowledge a “shared history” and the THUNDER retain the right to create and display duplicate copies of “memorabilia.” While they technically don’t own the EXPOS trademarks, the Washington NATIONALS also acknowledge their Canadian roots and shared history. Before the All-Star Game this summer, MLB announced the results of its “Franchise Four” competition, in which fans selected the four “most impactful players who best represented the history of each franchise.” The four winners and seven of the eight finalists for the NATIONALS were EXPOS.
The franchise structure of North American professional sports leagues allows teams to share a history without necessarily owning the associated marks or goodwill; and extensive licensing and merchandising programs help keep seemingly abandoned team names alive and well and available for revival.
So there is hope Montreal, not just for the return of a major league baseball club, but hope that the EXPOS can go home again.