The Cleveland Indians are planning to stop using the Chief Wahoo logo on their uniforms or on signage at the stadium starting in 2019. As a longtime source of controversy, the logo has been used less frequently recently with increasing protests and a legal challenge. However, the franchise will not give up the trademark or profits from sales of merchandise bearing it, and doesn’t plan to change the team’s name.
Today, for many people, especially Native Americans, the Chief Wahoo logo is an offensive caricature and stereotype of Native Americans. The logo’s exaggerated features emphasize certain perceived differences between Native Americans and other ethnic groups, reinforcing the idea that the race is inferior. In fact, 20 years ago or more, many college athletic departments like Stanford University and Marquette University, with Indian names or logos changed their mascot to non-offensive marks. And, since the 1970s, Native American groups have been asking for the Indians to stop using the Chief Wahoo logo.
IPWatchdog sat down with Richard Assmus, partner at Mayer Brown and Aaron Swerdlow, Of Counsel at Gerard Fox Law and a to discuss this decision and its potential impact on other team or holders of controversial IP.
“Calls for the Indians to stop using the logo have increased in recent years and other sports teams, primarily in collegiate athletics, have moved away from controversial marks and logos. This has left the Indians in a smaller, more controversial group of teams featuring names or logos offensive to many Americans, (e.g., the Washington Redskins, Atlanta Braves),” explained Swerdlow. “Using the logo less frequently was a half-measure to appease some of the objections on political correctness grounds while appealing to traditionalist baseball fans who strongly prefer the logo.”
The franchise has said it will not give up the trademark – or profits from sales of merchandise bearing it – and has no plans to change the team’s name. But, why might they be holding on to these rights? According to Assmus, to maintain a trademark registration and trademark rights in general, a trademark owner needs to be using the mark in commerce.
“If the logo was completely retired, the trademark rights would eventually cease to exist, permitting a third party to establish their own rights or making the logo in effect public domain,” he explained. “In either of these situations, third parties might exploit the rights in a manner that would be difficult or impossible for the team to control. Keeping the mark in use, albeit on a more limited basis, should allow the team to maintain its rights and prevent such exploitation.”
Beyond the legal aspect, the decision may reflect changing public perceptions of trademarks deemed offensive. Ironically, the Supreme Court’s decision in the Slants case (Matal v. Tam) made it potentially easier to register, and therefore enforce, names and logos deemed potentially offensive. In other words, while trademark law is making such trademarks more valuable, public opinion may be headed in the opposite direction.
Many sports teams semi-routinely update their logos, so the Indian’s ceasing to use Chief Wahoo can be viewed, in part, as due to standard industry practices, said Swerdlow. “Controversial and politically incorrect logos and team names continue to cause debate in the mainstream and sports media. The Indians hope to curtail, or even eliminate, such negative press coverage for their franchise.”
Why are there increasing protests against the Cleveland Indians logo and even a legal challenge lately? Per Swerdlow, calls to end or curtail such marks have been growing in frequency and intensity for decades. So, such changes are the result of decades of public discourse, advocacy by rights groups and watercooler debate among sports fans.
He added, “With Cleveland, there does not appear to a single precipitating event that lead to this change, rather it is the result of careful thinking by the team considering escalating calls among the media and sports fan for such a change.”
These days, Cleveland makes millions of dollars per year on the mark, which is a difficult sum to voluntary forgo, according to Swerdlow. The Cleveland Indians have a fiercely loyal and long-standing fan base who are currently enjoying winning after a long period of mediocrity.
“For a long-suffering Cleveland fan base, the name is beloved and valued part of regional history and culture. Cleveland is an old, well-established franchise with a rich history,” he explained. “The Indians team name is a significant part of this history, valued by many fans of the team and natives to northern Ohio.”
So, what is the potential impact on other holders of controversial IP? “There is no strictly legal impact to this decision, but as trademarks like this are retired, it may make the remaining trademarks of this nature stand out as targets for protests and criticism,” said Assmus.
This recent decision about the Cleveland Indians logo is meaningful and adds validity to those who have long asked for this change. In addition, it places more pressure on teams and universities that have not moved away from logos and names that are offensive to some.
Swerdlow added, “I expect teams such as the Kansas City Chiefs, Washington Redskins, Atlanta Braves, etc. to experience additional calls for change.”