Chief Wahoo Yanked From Game, But Not From Merch

Chief Wahoo

The Cleveland Indians' uniforms won't feature Chief Wahoo after the 2018 season. 

The grinning, red-faced caricature of an American Indian “is no longer appropriate for on-field use,” according to Commissioner of Major League Baseball Rob Manfred’s statement

However, that doesn’t mean the baseball team is abandoning its trademark rights in the logo that American Indian groups call offensive. 

The team still holds at least six active federal trademark registrations that include depictions Chief Wahoo, and the logo will continue to appear on licensed merchandise. 

Trademark rights are based on use. If a company stops using a trademark, then it loses its rights. Time will tell whether the Indians and MLB will be able to strike a balance between using the logo enough to retain trademark rights, but not so much that it offends people, Aaron Swerdlow of Gerard Fox Law PC, Los Angeles, told Bloomberg Law.

“It’s fair to assume that the league and the team don’t want to give up that market. How do they continue to capture that market and own the mark without further offending anyone?” Swerdlow said.

However, the team’s decision shows that the Supreme Court’s ruling last year in Matal v. Tam barring the Patent and Trademark Office from denying trademark registrations to disparaging names or images isn’t making offensive trademarks more common, Jason Bloom, a trademark lawyer with Haynes & Boone, Dallas, told Bloomberg Law. 

“There was some outcry that the market would just be flooded with disparaging trademarks, and that hasn’t been the case,” Bloom said. “Teams and companies are really going to look to what is good business, and here it makes good business sense to stop using a trademark that is offensive to some segment of your fanbase.”