‘Wolves’ not just for team’s taking

The “Washington Red Wolves” has a nice ring to it for some fans of Washington’s NFL team.

Arkansas State University might disagree.

Washington, which recently announced it is retiring its longtime mascot the “Redskins”, is soon to choose a new nickname. The Red Wolves — which has been trademarked by Arkansas State since 2008 — has become a favorite among fans and players who have expressed support for the name on social media.

But before Washington makes a franchise-altering decision that could add more wolves to the pack, most believe the franchise will reach out to ASU if it is serious about choosing the name.

“I’d be hard pressed to think that the Washington NFL team, with all of its lawyers of experience, would just move forward with Red Wolves without at least venturing to reach out to Arkansas State and try to reach a co-existence agreement,” said Darren Heitner, who teaches sports law at the University of Florida and is the founder of Heitner Legal.

According to Arkansas State general counsel Brad Phelps, that has yet to happen.

Washington wouldn’t be the first professional sports team interested in the name, either. Chattanooga Red Wolves SC, a professional men’s soccer team in the United Soccer League, filed a complaint seeking a declaratory judgment in federal court over the name in November 2019. A court date has been set for Oct. 12, 2021.

This has thrown a whole new twist, professionals said, into Washington’s name selection if it were to choose Red Wolves. The Democrat-Gazette spoke to five legal professionals ranging from sports law professors to trademark and intellectual property lawyers to explore the potential outcomes for ASU.

“It’s a fascinating case for many reasons,” said Alexandra Roberts, an associate professor at the University of New Hampshire School of Law. “When you look at Washington possibly picking [Red Wolves], Arkansas State is making a pretty big show that they are territorial, they are litigious, they are not going to quietly allow anybody who wants to use the Red Wolves name.”

Chattanooga registered the trademark with the U.S. Patent and Trademark Office (USPTO) in September 2018. In December 2018, ASU sent the organization a cease-anddesist letter, citing a “violation of federal and state law as trademark infringement and unfair competition.” ASU was defending its trademark as required by the USPTO, feeling that there may be confusion among consumers over the two names and logos.

Instead of going through the USPTO, which is common practice, Chattanooga went straight to federal court on Nov. 25, 2019. Now, a federal judge will decide whether or not Chattanooga is infringing on Arkansas State’s trademark.

Essentially, ASU will have to prove in court that Chattanooga’s mark creates confusion in the marketplace.

“That’s where Arkansas State is at a disadvantage,” said Mark Conrad, director of sports business at Fordham University. “Is an Arkansas State fan really going to confuse their Red Wolves with Chattanooga’s team? At this point, I would question that.”

Legal professionals said Chattanooga has a couple of things going for it in this case. First, it’s a professional team while ASU is amateur. Second, the two logos are different in color and design, making each distinguishable.

“If you just look at the two marks — the wolves’ heads — I think Arkansas State has a really difficult argument there,” said John Wolohan, a sports law professor at Syracuse University. “The two marks look different to me. I’m not the judge … but to me those marks are clearly different. If I bought the Arkansas State logo, I would not believe I’m supporting the soccer team in Chattanooga.”

The most-likely outcome, professionals said, is a co-existence settlement. Arkansas State has a record of doing this in the past, settling with the Indiana University East Red Wolves in 2009.

“I would be quite surprised if it didn’t end up that way,” said Mark Mckenna, a sports law professor at the University of Notre Dame. “This is posturing so that both of them can sort of lay down markers about what their rights are. And they’ll both wind up realizing that neither one of them has the ability to stop somebody else.”

Conrad said if the parties settle, they could have a co-existence agreement that limits the geographic score of their respective trademarks. For example, Chattanooga would have the right to use the mark in a defined geographic area while Arkansas State would use the mark in a different geographic area. This is the most common outcome and a trial in 2021 may not be necessary, professionals said.

“I will say, even as somebody who is not a part of the litigation itself, just as an outsider looking in,” Heitner said, “I would place a bet that it’s more likely than not that they come to a resolution prior to a trial.”

The Chattanooga Red Wolves SC case plays a significant role in Washington’s name selection, professionals said.

The issue, Conrad said, is that Washington is under a tight deadline. And if the Chattanooga case is not settled until October 2021, then Washington might be in a similar legal situation as the professional soccer team if it were to choose the Red Wolves.

“I suspect they certainly know about this issue, clearly. And they’re going to have to decide if it’s worth using the Red Wolves name,” Conrad said. “If you ask many lawyers — who tend to be risk-averse — they may advise against using the Red Wolves name under these circumstances.”

In essence, Washington has a short time frame, Conrad said, and is scrambling.

“As much as I think all these different teams can peacefully coexist as the Red Wolves, and they don’t even necessarily need agreements,” Roberts said, “I definitely think you don’t want to walk into something that’s risky. Even if the risk is 5%, even if the risk is 1%, you don’t want to make a decision, design the uniforms, announce it broadly and then find out that it’s not going to work out.”

Heitner said that for any Washington fans hoping that the team’s name becomes Red Wolves, it “may not be a wise decision” unless they can come to some sort of co-existence agreement. He noted that ASU has been aggressive in the past about its trademarks (Chattanooga), but also willing to settle (Indiana University East).

The most prevalent case of an NFL team and a NCAA school having a co-existence agreement is the Seattle Seahawks and Texas A&M University over the school’s trademark “12th Man.”

The Seahawks and Texas A&M have had a co-existence agreement in place since 2006, and agreed to a new five-year licensing agreement in 2016. Each year, the Seahawks pay Texas A&M $28,000 in royalties and in support of the university’s fight for the trademark, according to ESPN’s Darren Rovell.

But Washington and Arkansas State’s agreement would be totally different and likely cost much more, said Wolohan.

“I’m not sure the NFL properties will want to enter into that type of an agreement, especially on a team mark like this,” Wolohan said. “Because now we’re talking big dollars, whereas Seattle is forking over money for the 12th Man — NFL properties deals with all 32 teams. So if all the sudden they have to write a check to Arkansas State out of that, it could get expensive.”

The professionals said if there is an agreement between Arkansas State and Washington, any kind of payout is just speculation.

But if Washington really wants to adopt the Red Wolves name, it comes down to one question.

“Who is going to have the leverage? And if the Washington team really wants that name, they can do it,” Conrad said. “They don’t have to file the trademark yet. The ownership can use the Red Wolves name. It could be messy, but the team has financial resources to settle a future dispute and possibly gain a co-existence agreement.

“When you have more money in your pocket, you have more flexibility.”