Brand Enforcement / 07.03.2019

As Crowds Gather for the 2019 All-Star Game, Will “The Chief” Make an Appearance?

By Kyle Hutnick

In January, 2019, the Cleveland Indians announced their epic decision to remove the Chief Wahoo logo from the team’s uniforms beginning in the 2019 season. But if you thought that was the end of “the Chief,” think again.

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It is well known that the Chief Wahoo logo has faced its share of criticism. You don’t have to be a sports fan to know that it has long been criticized as one of the most vulgar, racist and disparaging logos in athletics. In fact, much like the Washington “Redskins” logo (whose trademark has encountered its own share of legal challenges), the team faced a petition with the Trademark Trial and Appeal Board to cancel Chief Wahoo’s trademark registration. Many have called for the Indians to completely stop using the Chief Wahoo logo, and even change the team’s name completely.

So when the Indians announced their decision to remove the Chief from the team’s uniforms beginning in 2019, many welcomed the change. The team continued to face opposition, however, and some even speculated that “the only reason Cleveland agreed to remove Wahoo was to [host] the All-Star Game in 2019.” The team and the MLB consistently denied that the MLB “forced” the change, and the team unequivocally claims that “the two are not connected in any way.

With just days until Cleveland hosts the 2019 MLB All-Star Game, it’s worth looking at how this story has evolved.

If you are watching the All-Star Game next week, don’t expect to see even a trace of Chief Wahoo at the ballpark — at least not on the field. Off the field, if you want to catch a glimpse of the Chief, look no further than the team’s gift shop. After the historic announcement that it would remove the red-faced caricature, some might find it ironic or even disingenuous that the logo lives on in the team’s official gift shop.

But there are legal reasons to “Keep the Chief” in use.

As we’ve written, federal trademark law establishes what is often called a “use it or lose it” policy. In the simplest terms, a trademark is abandoned (and “dies”) when the owner stops using the mark (typically for three or more years) with no intent to continue use. Once abandoned, any third party can use the mark for their own commercial gain. As you probably guessed, abandoning a trademark opens the floodgates for counterfeiters, infringers and other unauthorized sellers.

If the Indians were to completely cease use of the Chief in commerce, then the team would lose its registered trademark protection. Without the ability to enforce the mark, anyone could be free to make and sell merchandise bearing the Chief Wahoo mark. For the Indians, abandonment would practically guarantee a booming market for “counterfeit” sales of the so-called nostalgic logo (we’re looking at you, street vendors). While the Indians may have intended to remove the logo, abandoning the trademark might actually have the opposite result and increase unpoliced use, resulting in negative goodwill for the team.

All brands want to prevent knock-offs, and it’s important to build a brand protection strategy to accomplish that goal. You can see the Indians’ strategy play out whether you are in Cleveland at the All-Star Game festivities or at home watching on TV. If your company is interested in developing its own winning brand protection strategy, contact Kyle Hutnick at kah@kjk.com or 216.736.7243, or reach out to any of KJK’s Brand Enforcement professionals.

 

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