A trademark infringement lawsuit by a New Jersey-based barnstorming basketball team known as the Harlem Wizards against the NBA and Washington's would-be Wizards could stall the local team's plans for a makeover when it moves into its new, 20,000-seat MCI Center next fall.
An attorney for the Harlem Wizards said his team wants Washington's NBA franchise -- currently called the Bullets -- to find another name and pay the Wizards money for damages. A trial was held last August in Newark, N.J., before a federal judge, and both sides are awaiting the judge's decision.
Neither club has been granted official trademark status. The Bullets applied first for the Wizards trademark and the Harlem Wizards afterward.
Bullets President Susan O'Malley declined to comment because of the pending litigation.
Although the NBA and the Bullets can go ahead with the name change until the judge rules otherwise, the case has already done two things: cost thousands of dollars in legal fees and thrown a wrinkle in the Bullets' plans for a new look next year.
"The Bullets are in a Catch-22," said Rick White, chief executive officer of Sports Merchandising Associates, a New York City sports consultant. "The more they promote the name Wizards, the more potential damage they may be doing to themselves if they have to change the name. The less promoting they do of the new name, the greater the risk they have of damaging the franchise long-term."
The Bullets could simply pay the Wizards to go away, but the sides are "hundreds of thousands of dollars apart," said Harlem Wizards attorney Peter Nussbaum.
The choice of the Wizards is a classic illustration of the trademark minefield that sports franchises must navigate when selecting a name and logo in the fiercely competitive sports merchandising environment of the 1990s.
"It's incredible how few names are unencumbered," said Randy Bernstein, executive vice president for Major League Soccer. "We looked at 18 gazillion."
Some sports industry figures said that team owner Abe Pollin's choice of Wizards was a surprise because there are other teams that already have the same name: the Fort Wayne, Ind., minor league baseball Wizards, for one. The Kansas City MLS franchise will announce this month it is changing its name from Wiz to Wizards because of complaints by another trademark holder, the consumer electronics retailer named "The Wiz."
"Anytime you're dealing with logos, you want ownership of that trademark to be as clean as possible," said Marc S. Ganis, chief executive officer of Sportscorp Ltd., a Chicago-based sports franchise consultant.
Bernstein said he didn't see room for conflict, given the teams' geographical distance and separate sports. But Fort Wayne Wizards owner Eric Margenau doesn't like Washington's choice.
"I'm displeased," Margenau said. "The Bullets have taken the action, betting we're not going to spend the money to defend our trademark."
The road to the Wizards began in the 1994-95 season when Pollin started thinking about a name change because he believed Bullets sent a message of violence.
The team has been the Bullets for 34 seasons -- first in Baltimore, then Washington since 1973.
The Bullets first told the NBA in January 1995 that they were considering a name change, according to an Associated Press report of testimony at the Wizards trial. In January 1996, the team sent the league several names to consider for final trademark search, which is generally more extensive than initial reviews. Around this time, "Wizards" became one of the favorite choices of Pollin and the potential names were circulated in public through contests.
The Bullets sorted through more than 500,000 nominations submitted to a local restaurant chain, and a seven-member panel that included Pollin, O'Malley and all-star forward Juwan Howard, narrowed it down to five finalists last February. In addition to the Wizards, the other names included the Sea Dogs, Dragons, Express and Stallions. Pollin later announced that "Wizards" was the easy winner in a telephone poll, but he declined to say how many votes had been cast or what the margin of victory had been.
In early February, the NBA received a report it commissioned from a trademark search firm that showed an entry for Harlem Wizards, noting the organization was "sports professionals."
The team has been playing a comedy brand of basketball similar to the Harlem Globetrotters up and down the East Coast since the 1960s, according to its attorney. Harlem plays 250 games a year, including between 10 and 15 in the Washington area.
NBA spokesman Peter Land said the league had no comment on the pending litigation.
The Harlem Wizards say they have the rights to the name because they have been using it since the 1960s, even though they didn't get around to registering the trademark. Attorneys specializing in trademark and intellectual properties said the first user usually has priority in a trademark dispute.
The Harlem team must prove that there is a likelihood that consumers will be confused by having two basketball teams named Wizards, said Chuck Jarrett, a Cleveland attorney who handles trademark cases for Major League Baseball. The Bullets said the Harlem Wizards' style of play is far different than that in the highly competitive NBA.
The Harlem Wizards are worried about a concept known as "reverse confusion," when people start thinking the first user of the mark is ripping off the second. "Even though we've had the name longer, people are going to think we're just trading off the NBA Wizards," said Nussbaum.
If the Harlem Wizards win the trial, they said their next step will be to seek damages. If the Bullets win, there is no telling if they will have clear sailing, what with the Fort Wayne Wizards and perhaps other Wizards out there.