Brazilian race car driver, Ayrton Senna, famously said, “Being second is to be the first of the ones to lose.” While that philosophy may not be the truth of life, it is often the truth of trademark law - a lesson learned recently by the Washington Football Team.

After deciding to remove “Redskins” from its name last year, the Washington Football Team applied to the United States Patent and Trademark Office to register its new name for marketing purposes. Last month, they were issued an initial refusal from the USPTO based upon a prior registration and two prior applications.

One of the most fundamental and underlining principals in granting federal trademark registration rights is that the party that first uses a trademark in commerce retains the rights to its use. Stated simply: first come, first served.

In the Washington Football Team case, a prior registration for the name “Washington Football Club” had already been granted by the USPTO. Finding that the Washington Football Club name was so similar to the new Washington Football Team name as to potentially create confusion among consumers, the trademark examiner denied the Washington Football Team’s application for registration. What’s more, the examiner cited two additional previously filed and pending applications for the name “WTF Washington Team Footballers,” adding another layer of blockade to the NFL team’s application for registration rights. Interestingly, the pending applications were filed just five days prior to the Washington Football Team application.

Before deciding to launch your trademark, it is important to diligently search for potentially confusing pre-existing registrations. It is equally important to file your trademark application as soon as you commit to the mark. As they say, timing is everything.

If you have questions about registering your trademarks, feel free to give us a call at (248) 477-6300. We’re happy to help you head to the front of the line.