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“Tom Terrific” denied by USPTO

When should one file a trademark to protect their right to use it?  There have been several high-profile Tom Brady was criticized for his application to file “Tom Terrific.”

I addressed this issue on sports personality Mike Meltser’s podcast.  The New England Patriot’s quarterback filed for the trademark as a way to protect his legal interests.  He filed an intent-to-use application for T-shirts and shirts, collectible trading cards, sports trading cards and printed photographs.  However, New York fans were not having it.  A letter of protest was filed by a New York-based attorney and former USPTO examiner.

The Letter of Protest, which can be filed by a nonparty, brought to the attorney examiner’s attention that the application’s mark was similar to famous Met’s pitcher Tom Seaver’s nickname.  The Letter of Protest included a multitude of examples of media referring to Seaver as “Tom Terrific.”

Letter of Protest re “… by Jason Cruz on Scribd

The Mets also chimed in:

The USPTO issued a nonfinal Office Action refusing registration for the False Connection with Tom Seaver.  Also, it was refused because it was the name of a living individual.

It’s noteworthy to bring up that Brady had stopped the trademark application of Lacrosse player Trevor Baptiste for the registration of TB9 due to a likelihood of confusion with Brady’s TB12 trademark.  So, the initial refusal to trademark “Tom Terrific” seems ironic.

If not for the Letter of Protest, one might wonder if the mark would go through the process of being published for opposition.  Certainly, if published for opposition there would have been someone to have stepped up to object to the registration.  Of course, the examiner could have discovered the name’s tie-in with the Met’s pitcher themselves.  But its interesting that the Letter of Protest was filed to prevent Brady’s application from going forward.  It goes to show you that the Boston-New York rivalry is deep.

But with filing trademarks, Brady’s attempt to register “Tom Terrific” as valid reasons.  He indicated that he wanted to insulate himself from being sued in the oft-hand case that he were to use it.

A couple things on the denial.  Brady could file a response to the Office Action in which he could plead his case for registering the lawsuit.  However, he’s expressed regret in filing for the application.  Also, a maybe most importantly.  Tom Seaver’s estate, nor the Mets or Reds (the two teams for which his playing career is synonymous) have filed a trademark with the USPTO.  Therefore, Brady could still utilize the name barring any mark application with the USPTO and/or state level.

 

Nike strikes back against Kawhi logo lawsuit

Nike has filed counterclaims against Los Angeles Clippers’ Kawhi Leonard arising out of his claims that the company stole his logo that he wished to use with his current shoe sponsor, New Balance.

Leonard filed a lawsuit last month claiming that Nike had filed a Copyright based on a logo he claims to have made.  Nike argues otherwise.

In a recent court filing, Nike has filed counterclaims against Leonard stating that the company owns the copyright, he is infringing on the copyright and requesting that the Copyright office cancel Leonard’s design.  Nike suggests that he “knew that he did not author the Claw Design, and specifically knew of the Contract’s intellectual property ownership provision. “

The counterclaims cite an interview Leonard did in 2014 in which he stated that he had a ‘rough draft’ of his logo but Jordan Brand refined it and he gave them the ‘credit’ because he was no artist. They also claim that Leonard is attempting to ‘re-write history’ with his claims of creating the design.

The crux of the issue is that Leonard wanted to use the Claw Design for use with his new apparel sponsor, New Balance.  The company capitalized on Leonard’s success this past year when he helped the Toronto Raptors win an NBA Championship.  Since then, Leonard has moved on to the Los Angeles in a blockbuster shift of power in the league as he went to the Clippers along with Paul George.  With his move to Los Angeles, the hub of everything, the marketing for Leonard would be vital assuming that his representatives would want to monetize the situation.

As one might have expected there are two sides to a story and according to Nike, Leonard’s design was not stolen.  In fact, per Nike, the company enhanced a ‘rough draft’ of the drawing.  Can Leonard claim that the idea was originally his built upon by Nike?  Likely, but that does not provide a legal basis for ownership of the claw design.  Leonard may claim that the ‘rough draft’ drawing that Nike has produced was not final and he provided input which could be an argument to the counterclaims.

Once again, this is another reminder that contractual clauses within contracts should be detailed.

U.S. Supreme Court strikes down portions of Lanham Act in trademark registration case

The U.S. Supreme Court has struck down the section of the Lanham Act which precludes the registration of proposed trademarks that are deemed “immoral or scandalous” citing a violation of the First Amendment.

The case is based on Erik Brunetti’s attempt to register “FUCT” to use on apparel.  The United States Patent and Trademark Organization denied his application.  However, the U.S. Supreme Court in a ruling issued on June 24th concluded that the “immoral or scandalous” bar similarly discriminates on the bases of viewpoint and so collides with this Court’s First Amendment doctrine.

“The statute, on its face, distinguishes between two opposed sets of ideas:  those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation,” wrote the majority opinion.

The opinion follows the more hailed U.S. Supreme Court opinion in Matal v. Tam when a Portland, Oregon-based rock band wanted to deem itself “The Slants.”  The U.S. Supreme Court struck down the provision in the Lanham Act barring the registration of “disparaging” trademarks.

The USPTO determined that “FUCT” was “a total vulgar” mark and “therefore unregistrable.”  The review board stated the mark was “highly offensive” and “vulgar,” and that it had “decidedly negative sexual connotations.”

Reviewing the Tam decision, it determined that if a trademark registration bar is viewpoint-based, it is unconstitutional.  Secondly, the disparagement bar of the Lanham Act was viewpoint-based.  Thus, the common conclusion among the justices was that the government may not discriminate against speech based on the ideas or opinions it conveys.  Moreover, it cannot discriminate against “ideas that offend.”

Notably, the opinion provides examples from the USPTO which highlight their argument in comparing and contrasting accepted and rejected trademark registrations based on whether or not the government accepts or rejects the viewpoint.

Justice Alito remarked in his Concurring Opinion that “[v]iewpoint discrimination is poison to a free society.”  He notes that the ban on “immoral” or “scandalous” marks can be exploited for illegitimate ends.  Additionally, while he may disagree with the registration of “FUCT,” he acknowledges that the Court cannot do anything about it unless the law is rewritten.

The opinion is a victory for those of Free Speech and the possibility to register marks that might have contrary opinions to mainstream society.  Yet, even with Justice Alito’s concern of the stricken clause in the Lanham Act to be exploited, so too could be the newfound avenues to register marks which are protected by the First Amendment, but are all the same reprehensible and do not contribute to societal mores.

The problem here is that while pop culture is changing and evolving, the Lanham Act remains the same.

For businesses and entities looking to trademark marks with controversial names, the ruling should help the possibility of registration with the USPTO.

Kawhi Leonard files lawsuit against Nike over ownership of “Klaw” logo

Kawhi Leonard has filed a lawsuit against Nike for the use of his “Klaw” logo.  The Toronto Raptor’s forward argues that the company ‘falsely claimed’ that it created the logo in a copyright registration.

Leonard, who is now a New Balance-sponsored athlete, claims that he came up with the “Klaw” logo and gave Nike permission to use the logo when he was a Nike-sponsored athlete.  The copyright registration filed by Nike was done without his consent according to the Leonard’s lawsuit which was filed in California federal court.

In the lawsuit, Leonard alleges that he had contemplated the logo since college and created a drawing of a logo in December 2011/January 2012.  Leonard signed a “Men’s Pro Basketball Contract” with Nike in October 2011.

Nike approached Leonard about a personal logo.  While the Beaverton, Oregon-based company provided proposals, Leonard claims to have rejected them.  While Leonard agreed upon a logo, he claims that he retained ownership of that logo.  In May 2017, Nike registered with the U.S. Copyright Office, the logo accepted by Leonard.

Leonard applied for a trademark based on his logo in November 2017.  Now a New Balance athlete, intends to use the “Klaw” logo on sportswear but Nike claims that it owns the mark and has registered the Copyright.

Leonard is seeking a Declaratory Judgment from the Court which would state that Leonard is the true owner of the logo.

This case involves the intersection of Copyright law and Trademark law.  Copyrights are original creative works while Trademarks are recognizable signs, designs or expressions for a good or service.  A logo, like the one fought over here, can be both a copyright and trademark.  While distinguishable, Leonard claims he created the logo that he used with Nike.  It can also be used for a trademark as Leonard intends to use the mark on branded clothing.

The case is notable since there did not seem to be a contract regarding who owns the rights to intellectual property used while marketing Leonard.  This seems that it would have outlined ownership rights of things like this.  Nike claims that it owns the copyright and will likely argue that it assisted Leoanrd with the logo and thus retained ownership since he was under contract at the time.

Obviously, with Leonard’s great run with the Raptors this year, he is looking to capitalize with his new company, New Balance.   Also, the Los Angeles Clippers, which hopes to land Leonard after this season, hoped to buy the logo from Nike.

The lawsuit shows the need for contracts to be detailed enough to contemplate things like intellectual property rights.  It also shows the intersection of copyright and trademark law and its uses.

Legal sports betting in Washington state on hold until next year

Will Washington State have legal sports betting?  We’re probably years away from that happening despite the fact that other states across the nation have been proactive in drafting legislation to legalize gambling in their state.

Last year, the United States Supreme Court struck down the federal law that banned sports gambling in all but a handful of states.  The U.S. Supreme Court left it to the individual states to decide whether or not they allowed gambling.  Currently, there are 8 states that have passed laws to allow legal betting in pro and college sports.

In the 2019 legislation session, Olympia had three bills on gambling on pro and college sports.  But none of those bills came close to passage.

HB 1975, as outlined by the Tacoma News Tribune, was the most notable as it would have allowed Vegas-style gambling only at tribal casinos.  As you might expect, there was opposition by trade groups representing card rooms, sports bars and restaurants.

This doesn’t even consider the possibility of mobile sports betting.  HB 1975 would have allowed bets to occur over one’s phone only if the individual is in a tribal casino.  But first, the stakeholders must decide on a platform.

HB 1975 received the most attention because of the strong backing by the tribal casinos.  But this was offset by other potential venues for gambling including the Emerald Downs racetrack in Auburn, Washington.  Emerald Downs, which also houses a casino on its premises, voted against the measure despite the fact the track is run by the Muckleshoot Indian Tribe.

Since this is a new issue for lawmakers to grasp, there are a lot of questions and concerns.  One of the major issues is the possibility of the rise of gambling addiction.  In addition, the economic impact of regulating sports gambling is an interesting proposition for the state which is always is always looking for ways to generate revenue.  According to the American Gaming Association, there is an estimated $58 billion bet on the NFL and college football each year.  But, most of that is illegal.  If the state can realize on a fraction of the amount of money through regulated sports betting, it would certainly be a boon.  HB 1975 which would allow sports betting on tribal lands would mean that state and local governments would not receive tax revenue but only through a trickle-down affect from consumer spending.

If, or maybe when, sports betting is legalized in the state, one would have to think that the Washington State Gambling Commission would be a part of overseeing regulation.

Other states including Montana and Oregon have moved forward in legalizing sports gambling.