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Super Bowl Champs seek to trademark “Philly Special” with USPTO

The Philadelphia Eagles have filed for the trademark, “Philly Special,” with the USPTO.  It is a nod to the play that saw quarterback Nick Foles catch a touchdown pass in the Super Bowl.  The Eagles won the Super Bowl over the New England Patriots and Foles became the MVP.  It was later disclosed that the name of the play was “Philly Special.”

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The Eagles were not the only ones that saw an opportunity to file for the trademark.  Several others have filed for the mark.  As of the date of this writing there are 6 other mark applications for “Philly Special” and 1 for “The Philly Special.”  The one using “The” is a mark application for a sandwich.

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All of the other “Philly Special” mark applications were filed before the Eagles’s application of February 15th.  But, those applications were 1(B) applications which reflect an application that has yet to put a product or service in commerce with its intended mark. Only “The Philly Special” has a mark it claims it is using.

The Eagles use a specimen which shows the names of the players that had the ball during the play, “Philly Special” although the exact name is not on the shirt.

In all likelihood, despite filing after the others, the Eagles will secure the mark for “Philly Special” as it relates to the selling of merchandise.  We shall see if “The Philly Special” will receive a trademark for its sandwich.  While the mark may operate in a different class of products or services than clothing merchandise, it originates from the Eagles’ play.

Ronda Rousey may have to grapple over the use of the “Rowdy” TM

Ronda Rousey made a surprise appearance at a WWE event to
kickoff her new foray into pro wrestling. ESPN reported that the former UFC champion will now be a full-time
professional wrestler.

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Pic via Wikimedia Commons

Rousey’s appearance included her theme music, Joan Jett’s “Bad Reputation”
walkout song and a shirt which included her “Rowdy” nickname.

On the same night that Rousey stepped into the WWE ring, the company started to sell Rousey t-shirts with “Rowdy Ronda Rousey” on the front in the distinctive Roddy Piper font.  While Rousey and the WWE likely received clearance to use the similar logo of Piper
from his estate (Piper passed away in 2015), the company and former UFC fighter may have to deal with a pre-existing registered trademark when it comes to obtaining a federal protection for the mark “Rowdy Ronda Rousey.”
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Rousey filed for the “Rowdy Ronda Rousey” trademark on July 7, 2015 for a variety of goods and services including action
figures, exercise and athletic equipment, bags, footwear, coats, yoga pants and more.  The marks were published for
opposition on November 10, 2015.  All of these marks were filed under a Section 1(b) designation meaning that she
intends to use the mark at a certain point in the future.  Under Section 1(a), the individual or entity registering the mark is currently using it. She has applied for and received 4 extensions since filing for the mark.  You are allowed 5 under the
rules.

The estate of Rowdy Roddy Piper filed for the mark, “Rowdy Roddy Piper,” on June
26, 2017.  The goods and services they seek to protect include clothing, action figures, memorabilia and “entertainment
services.”  An Office Action on October 25, 2016 was issued
by the USPTO examiner stating, among the issues, a likelihood of confusion with
a prior registered mark, “Rowdy Rodder,”  for the use of the
mark in clothing (International Class 25). The mark owners goods and services include shirts and was first used in
commerce in December 2015 and filed with the USPTO the same month.
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At this point in the Rousey application, her attorneys must submit evidence that they are using the proposed mark in commerce (e.g.,
Rousey’s shirts).  Once this happens, the examiner will determine whether the application can go forward in the process
toward obtaining registration with the USPTO.

The interesting issue will be whether an examiner might determine an Office Action is necessary due to the fact it is similar to the
Rowdy Rodder mark that has been in use since December 2015.  Notably, Rousey’s attorneys filed for the “Rowdy Ronda Rousey” mark in July 2015, while the “Rowdy Rodder” mark was used in Deceember 2015.  Hence, Rousey’s mark
would take precedence but she has yet to use it prior to the “Rowdy Rodder” mark.

Trademarks can be a confusing area of law as filing for a mark is important to maintain the validity of the brand.  There are a lot of marks out there that utilize the same name, but are in different industries and the USPTO allows the
registrations of these marks since its unlikely to be confused.

In the Rousey application, she has applied for the mark with the intent on selling t-shirts, a space that is already used by mark holder, “Rowdy Rodder.”  It is not known if the USPTOexaminer will halt the Rousey application from going forward.  Even if it does not, the “Rowdy Rodder” mark holder might bring a claim.

Despite these hurdles, I would anticipate that Rousey will still use the “Rowdy Ronda Rousey” character as she steps into the WWE ring at
Wrestlemania.  Its just a matter of how the parties will resolve the issue via USPTO Office Action or further legal wrangling.

LaVar Ball files for Trademark for new business venture but it might be opposed by NBA

The outspoken father of NBA rookie Lonzo Ball has filed a trademark for a Junior Basketball Association , a league for top-ranked prospects that do not want to attend college.  While the questions of the league are many, the one issue with the trademark is that it may come into opposition with the NBA which as an existing mark for Jr. NBA.

It’s clear we may see a showdown between the NBA and Ball on the trademark as the existing mark and the application for the JBA would be construed as confusingly similar as well as running in the same class of services.  We will see if Ball has something to argue in opposition to this.

Army files Notice of Opposition to NHL’s “Golden Knights” Trademark application

The Department of the Army filed a Notice of Opposition against the Las Vegas Golden Knights for its application to trademark its name, “Golden Knights.”

In its Notice of Opposition, it states that the United States Army has “acquired exclusive rights in the mark that predates any rights upon with Applicant may rely.”  It also states that its mark is famous and became famous before the NHL franchise filed its application for the nickname.

The Golden Knights was the name given to the U.S. Army Parachute Team and has been in use since 1969.

It also cites quotes made by the NHL franchise owner as it relates to the unveiling of the Golden Knights uniforms as it suggests the color scheme was chosen because Bill Foley “is a ‘West Point Guy.’”

The Army quotes a Washington Post article from December 1, 2016 in its Notice of Opposition:

“Foley, a graduate of the U.S. Military Academy at West Point, was aware of the name of the parachute team when he chose Golden Knights.  He even tried to get the parachute team to make an appearance at last week’s ceremony “but we couldn’t make it work,” he told the Las Vegas Review-Journal on Tuesday.

The Opposition notes that Foley attempted to use the “Black Knights” nickname but could not sine the NHL had the Chicago Blackhawks.

In response to the opposition, The Vegas Golden Knights issued a statement:

“In the Patent and Trademark Office, the U.S. Army filed its opposition to the Vegas Golden Knights’ applications to register the trademark VEGAS GOLDEN KNIGHTS used in connection with the sport of hockey.  We strongly dispute the Army’s allegations that confusion is likely between the Army Golden Knights parachute team and the Vegas Golden Knights major-league hockey team.  Indeed, the two entities have been coexisting without any issues for over a year (along with several other Golden Knights trademark owners) and we are not aware of a single complaint from anyone attending our games that they were expecting to see the parachute team and not a professional hockey game. That said, in light of the pending trademark opposition proceedings, we will have no further comment at this time and will address the Army’s opposition in the relevant legal forums.”

The NHL team successfully argued that there would not be a likelihood of confusion since fans are accustomed to multiple teams sharing the same nickname.  The Vegas team also identified other marks where Knights or Golden Knights had been trademarked.  They also argued that the marks were distinctive in appearance, pronunciation, meaning and commercial impression.,

In addition to the Army, the College of Santa Rosa, which also has rights to the mark may also file a notice of opposition.

H/t: Sportslogos.net for the report.

One has to think that the sides will come to some sort of agreement for the use of the mark.  At this point, the NHL Golden Knights are having a very good season in its first year as a franchise and this would make it awkward to change the name or logo after just one season.  There is the opposition of the College of Santa Rosa to also consider

Fight over “Empire” provides victory for use of trademarks in expressive works

The Ninth Circuit Court of Appeals issued a ruling that should help game developers, authors and other creative-types that use third-party trademarks in the commercial promotion of an artistic work.

In Twentieth Century Fox Television v. Empire Distribution the appellate court determined that “it only takes a minor logical extension” to hold that First Amendment protection extends to the advertisement of those protected works.  This would mean that video game developers, virtual reality creators and authors could use a third party’s trademark of the real world and assert First Amendment protection to commercially promote their work while displaying the third-party trademarks.

via Wikipedia

Empire Lawsuit by JASONCRUZ206 on Scribd

At issue is the use of the name “Empire” by the popular Fox television series featuring a fictitious record label.  Empire Distribution is a real record label that sent a cease and desist letter to Fox (owners of the Empire tv show) with respect to its mark.  Going on the offensive, Fox filed a lawsuit requesting a court issue a declaratory judgment that there was no infringement.  On a summary judgment motion, the California court agreed that there was no violation of trademark under the Lanham Act or California law.

The case seems to answer the question of whether one might be able to use a trademark without permission of the mark holder when the use is tangential to the work.  The ruling follows the Ninth Circuit’s trend granting First Amendment protection for expressive works.  The overarching test is found in the famous Rogers v. Grimaldi case.  The “Rogers test” states that “an artistic work’s use of a trademark that otherwise would violate the Lanham Act is not actionable unless the [use of the mark]  has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [it] explicitly misleads as to the source or the content of the work.”

The two components of the Rogers test were key with the Ninth Circuit ruling in Empire.

1)     The title has no artistic relevance to the underlying work whatsoever, or

2)     If there is artistic relevance to the underlying work, the title explicitly misleads consumers as t the source or content of the work.

As we’ve explained in the past, the test stems from the Ginger Rogers-Alberto Grimaldi case.  There, the Second Circuit ruled in favor of the defendant as it related to a lawsuit filed by Ginger Rogers who sued Alberto Grimaldi for a film which emulated a dance routine featuring Rogers and Fred Astaire.  The Court stated that there is a conflict between the right to protect a celebrity’s name and the right for others to express themselves freely in their own artistic work.  The Court sided with the right to express versus trademark protection when it came to the mark’s minimal use so long as it did not “explicitly denote authorship, sponsorship, or endorsement by the celebrity or explicitly mislead as to content. See Rogers v. Grimaldi, 875 F.2d 994, 1005.

One of the notable issues in the “Empire” ruling was the argument by Empire Distribution that Fox had advertised its show outside the “title or body of the work” as actors did media appearances to promote the show as well as the sale or licensing of consumer goods.  Empire Distribution argued that “Fox’s use of the mark “Empire” extends well beyond the titles and bodies of these expressive works.”

The Court stated in its ruling, “[a]lthough it is true that these promotional efforts technically fall outside the title or body of an expressive work, it requires only a minor logical extension of the reasoning of Rogers to hold that works protected under its test may be advertised and marketed by name, and we so hold.”

Recently, AM General, LLC, the maker of Humvee vehicles filed a lawsuit against the video game publisher for Call of Duty for trademark infringement.  Similar to the “Empire” lawsuit, the trademark holder claims that the unauthorized use of its registered mark was infringement.

We note that the ruling is from the west coast’s Ninth Circuit.  It’s not clear whether other jurisdictions would follow as the Ninth Circuit is known as a liberal jurisdiction.  But, the ruling is a good sign for those wishing to use trademarks in passing.