15 May Wahoo in the Team Shop This Season
By Ryan Jones and Adrianne Rose
After years of growing pressure to retire Chief Wahoo, the Cleveland Indians removed the longtime trademark from their uniforms this season. While this step may have quelled some of the public outrage surrounding the trademark, opposition still exists to the Indians’ continuing sale of items featuring the Chief. It begs the question, “if the Indians have gone this far, why don’t they just retire the trademark all together?” The answer may lie in retaining rights in the trademark.
If the Indians stopped selling Chief Wahoo merchandise, the trademark could be considered abandoned. Under the Trademark Law Revision Act of 1988, a trademark is deemed abandoned when the owner has discontinued use of the trademark with no intent to resume use. “Use” of a trademark is measured in terms of “use in commerce” or the “bona fide use of the trademark in ordinary trade.” In other words, to retain ownership of the trademark, the Indians need to continue selling merchandise featuring the trademark. Mere token use or “warehousing” would not suffice. Given the divisive nature of the trademark and the fact that the Indians have publicly announced that Chief Wahoo is “no longer appropriate for on-field use in Major League Baseball,” removal of Chief Wahoo from all team merchandise would strongly suggest that the Indians have no intent to resume its use. It would simply appear to be the next natural step in permanently retiring or abandoning the trademark.
So, what’s the harm in abandoning the trademark? Abandoning the trademark could open the doors for other companies to begin selling their own merchandise featuring Chief Wahoo. As a result, and at the very least, the city of Cleveland would see an influx of Chief Wahoo merchandise produced by third parties. The Indians’ decision to minimize the use of Chief Wahoo while attempting to maintain rights to the trademark could be viewed as an attempt to prevent such an outcome. This balancing act has played out before in the case of the Atlanta Braves and their “Screaming” or “Laughing Indian” trademark.
In 1989, the Atlanta Braves retired the “Laughing Indian” trademark due to pressure similar to that currently faced by the Cleveland Indians. Today, even though the Laughing Indian is no longer a primary trademark of the Atlanta Braves, the Braves franchise has maintained consistent ownership through granting licenses to sell merchandise featuring the trademark over the years. This has proven successful for the team as it has effectively removed the divisive trademark from the field while retaining its trademark rights by incorporating the trademark in a very small percentage of the team’s overall merchandise.
There is a limit on what constitutes sufficient commercial use, however, as evidenced by a similar case involving the Los Angeles Dodgers. The Dodgers’ attempt to retain ownership of their retired Brooklyn Dodgers trademark was not so successful. In Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd, the owners of the Los Angeles Dodgers brought a trademark infringement suit against the owners of The Brooklyn Dodger Sports Bar & Restaurant. The district court found that, from the time the Dodgers left Brooklyn in 1957, the team’s use of the trademark amounted to giving occasional written permission to use the Brooklyn Dodgers trademark for little or no compensation and using the trademark in their annual “old-timer” games. Accordingly, the court held that these instances represented non-commercial activities and that the Los Angeles Dodgers had abandoned the trademark. Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd., 817 F. Supp. 1103, 1130 (S.D.N.Y. 1993), vacated pursuant to settlement, 859 F. Supp. 80 (S.D.N.Y. 1994).
All in all, the Indians have a fine line to walk between retaining trademark rights and minimizing use of Chief Wahoo. For now, we’ll either be seeing Chief Wahoo in the stadium team shop, or potentially in countless shops around town.