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Washington State Author Files Trademark Anticipating New NHL Team in Seattle

A Washington state author is thinking ahead of the NHL’s anticipated expansion to Seattle.  Pamela Bowerman has filed a trademark application with the USPTO for the use of “Seattle Sockeyes” for her novels.

The Washington state author has been using the fictitious hockey team in her novels.  The writer filed for the mark on December 21, 2017, a few weeks after the NHL invited an investment group to make a pitch for an NHL expansion franchise.  The “Seattle Sockeyes” application indicates that the mark should cover “downloadable e-books in the field of fiction.”  Bowerman indicates that the first use of the mark occurred in 2014.  She has written a dozen romance novels involving the muscular, rugged men of the fictitious Seattle Sockeyes.

Bowerman, who goes by the pen name, Jami Davenport is the second such person to file a trademark application in anticipation of an NHL moving to the city.  A Microsoft attorney has filed for the mark, “Seattle Steelheads.”  The application, filed by Craig Farris, covers goods and services in Hockey Helmets, Hockey shoes, Hockey gloves and Entertainment in the nature of hockey games among other designations.

The Sockeyes mark application is a smart move by the author.  She filed the application not to capitalize on the prospect of having an NHL expansion team pay for the name, but for her right to protect her already proven mark from continuing.  Her class of goods or services is limited to ebooks which I would think an NHL team could live with as there would be little, if any confusion with an NHL team and a romance novel.

On the other head, the Steelheads mark is based upon an intent to use in the future.  Thus, the mark has yet to be used and in order for the application to be approved, the applicant must file a Statement of Use at some point down the line.  Moreover, the mark specifically relates to hockey which would be in conflict with an NHL team.

Most recently, we’ve seen the Las Vegas Golden Knights announced its nickname without securing the federal trademark.  It is currently in a battle over the trademark rights to the Golden Knights mark.

The move by Ms. Bowerman makes sense from her business and creative standpoint.  It’s not known what the name of the expansion franchise may be, but the forward thinking makes sense in protecting future romance novels for the author.

Midwest Companies fight over Goat mark

A lawsuit between two Midwest companies over the “Billy Goat” mark was filed in the US District Court for the Northern District of Illinois right before Christmas.  It’s an example of how two marks attempted to co-exist but eventually could not.

The plaintiff, Chicago-based Billy Goat IP, LLC owns the Billy Goat Tavern and Grill and has been around since 1934.  The Billy Goat Chip Company, LLC is a Missouri-based company but the Complaint suggests that its expansion into Chicago is one of the reasons for the lawsuit.

In addition to the tavern, the Plaintiff expanded into frozen burgers and beer sold at convenience stores. It received its service mark on the Principal Register in June 1982 and it was assigned to the current owners in 2015.

The defendant’s core business is selling potato chips.  The company started in St. Louis, Missouri according to the Complaint.  A trademark was filed with the USPTO in 2010 for potato chips.  It is primarily sold in the St. Louis market but it is expanding into the Chicago area.  The Complaint lists, with specificity, the areas in Chicago where The Billy Goat Chip potato chips are sold.

Plaintiffs claim that the actual confusion has impacted the ability to license the mark to third-parties due to the fact that there is an affiliation with Defendant.

Billy Goat IP v the Billy Goat Chip Company by JASONCRUZ206 on Scribd

The lawsuit reminds mark holders the need to be vigilant about enforcing its rights.  Although it would seem that the two marks would likely be confused from the outset, the Missouri company obtained the trademark.  One would think that the USPTO would have prevented the junior mark holder from obtaining such a similar mark.  But, one might not have contemplated the expansion of products and region.  This is one of the reasons why mark holders attempt to garner a broad description of its mark and/or obtain “intent to use” marks with the anticipation of expansion in other areas.

Humvee maker sues Activision for use in ‘Call of Duty’ Franchise

AM General, LLC, the maker of Humvee vehicles has filed a lawsuit against the video game publisher for Call of Duty for trademark infringement for use of its vehicles in its video game.  The lawsuit was filed in Federal Court in the Southern District of New York in early November and occurred at about the same time as the newest game in the Call of Duty franchise debuted.

The makers of the vehicle believe that the use of its four-wheel drive, military truck recently used in war zones in Iraq and Afghanistan has contributed to the success of its video game sales.  Activision claims that over 250 million copies have been sold of its first-person shooter game attributing to more than $15 billion in revenue.  The video game can be played on all major consoles and was the number one video game in 2016.

The lawsuit claims that Activision deceived gameplayers in believing that “AM General license the games or is somehow involved [in their] creation.”  It is “[w]rongfully leveraging the goodwill and reputation AM General has developed in these marks [HUMVEE} and [HMMWV]…”  AM General owns the marks for HUMVEE and HMMWV, an acronym for High Mobility Multipurpose Wheeled Vehicle.

AM General lists 8 video game releases for the Call of Duty franchise in which it alleges infringement of its trademark and trade dress.  This does not include Call of Duty’s latest release although it might be added at a later date.  The lawsuit includes screenshots of the use of Humvee (or HMMWV) marks in its video games as well as promotional screenshots which bolster the company’s claim that Activision used the Humvee to promote the franchise.

The lawsuit presents two interesting questions many applying for marks and markholders ask when it comes to the use of trademark material.  As noted in this post, there is a number of issues related to the physical world and the digitized world when it comes to whether consumers would actually perceive relatedness and confusion.  The argument here is that there would be no consumer confusion as to the maker of the military trucks (AM General) and the video game maker (Activision).  Essentially, gamers would not be confused that Humvee makers produced the video game or that Activision made trucks.

The second issue is whether there is an inferred endorsement, sponsorship or approval between AM General and Activision.  In its Complaint, AM General notes that it has licensed the use of the HUMVEE mark in several other video games.  Thus, other video game makers have paid for the use of the HUMVEE trademark and/or HUMVEEs in its games.  But, it appears Activision did not seek a license with AM General.

Activision might be able to argue a nominative fair-use defense which would allow the use of a trademark without permission so long as the use is for description and reference to the product simply as a point of reference.  There is also the “Rogers test” which 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 test stems from the Ginger Rogers-Alberto Grimaldi case.  In that case, 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.  In that case, 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. Grmaldi, 875 F.2d 994, 1005.

It will be interesting to see how the Second Circuit will rule on this case.  If the Court determines to use the Rogers test, it would bode well for Activision although AM General may argue that the use of the Humvee in promotion would assume endorsement and mislead.  But, if it is believed to be used as a mere source identifier, Activision would have a solid case.  The issue of consumer confusion appears to be a subjective one and will be dependent on briefing to determine the outcome.

I will keep you posted.

Companies vie over Fight Sports mark

This past summer a trademark fight over “Fight Sports” took place between a Canadian company specializing in combat sports content and the New York company owning the trademark.  The U.S. District Court for the Eastern District of New York denied the trademark owners preliminary injunction deeming the terms generic and not likely to be confused.

CSI Entertainment, Inc. (”CSI”) is a multimedia company that acquires, produces, and distributes fight-related content through various media outlets in the United States and abroad.  CSI owns the trademark for Fight Sports and Fight Sports Network.  As a syndicated network, CSI advertises to the consuming public and RSN executives.  The trademarks were registered with the USPTO in January 2006 and June 2006 respectively.

The defendants are Canadian companies which offers “24/7” fight-related content through THE FIGHT NETWORK.  CSI notified the Canadian companies of its trademark in a cease and desist letter in March 2007.  Fight Media, one of the defendants in this action, responded claiming that the marks were generic and denying infringement.  The response indicated that if it did not hear back from CSI, it would consider the matter settled.  This occurred while Fight Media remained operating in Canada.

When the Canadian company moved into the U.S. market and attempted to register for the Fight Network trademark it was denied due in part to CSI’s registered mark.  The New York-based company then filed for a preliminary injunction precluding Fight Media from using the Fight Network and Fight Sports marks.

A Show Cause Order for Preliminary Injunction was filed by CSI in June 2015.  The hearing was to request an order to stop Fight Media from using the marks FIGHT SPORTS or THE FIGHT NETWORK.  A Preliminary Injunction hearing took place in November 2015 with the Magistrate issuing a Report and Recommendation that CSI’s preliminary injunction be denied.  The hearing featured witnesses on behalf of CSI which testified to CSI’s marks, business model and industry reputation.  Defendants called witnesses to testify about the nature of CSI’s marks, the defendants’ presence in the market and the defendants’ reputation in the industry.

The three factors a Court considers when determining to order a preliminary injunction is whether the party requesting an injunction:

1.       That they face a substantial threat of irreparable damage or injury if the injunction is not granted;

2.       The balance of harms weighs in favor of the party seeking the preliminary injunction;

3.       That the grant of an injunction would serve the public interest.

In some jurisdictions, the likelihood of success on the merits is another factor considered.

Objections were filed in March 2017 with responses from the defendant occurring in April 2017.  After review, the Judge accepted the Report and Recommendation and dismissed the Plaintiff’s request for a preliminary injunction in its entirety.  In its order, the court noted that CSI failed to object to the fact that it would suffer irreparable harm in the absence of injunctive relief nor object to the Judge’s decision that the public interest is not harmed by denying the plaintiffs’ request for injunctive relief were factors in its decision.  Thus, the Judge determined CSI waived further review of the two of the three prongs of the preliminary injunction analysis.  As a result, it failed to carry the burden as the moving party for the preliminary injunction.

The analysis by the Magistrate determined that the balance of the factors weighed in favor of the Defendants.  It stated that the terms FIGHT SPORTS and FIGHT SPORTS NETWORK were common within the industry and that there would be no likelihood of confusion between the marks.

While the consensus from many is that the terms Fight Sports and Fight Sports Network, they still hold the U.S. trademarks.  Losing out on the preliminary injunction did not cancel their marks, but it meant that the Canadian company can continue to use the Fight Network mark in the United States.

The Report and Recommendation which was adopted by the Court notes that the delay in responding to the Fight Network was a factor in its decision against CSI.  Notably, the Report and Recommendation found it unjustified that CSI waited because it realized that it was receiving competition.  This is a factor in defeating a preliminary injunction on the basis of irreparable harm.  The Magistrate’s report noted that CSI filed the lawsuit two weeks after the USPTO deemed the Defendants’ mark abandoned but had “ample notice” about Defendants’ mark and growing presence in the U.S. market many years earlier.  Evidence of this was a cease-and-desist letter sent to the Fight Network in early 2007.

The Magistrate also found CSI’s evidence of harm speculative at best as it did not produce profit and loss statements and only anecdotal testimony that the Fight Network hurt its business.

The Court held that CSI and Defendants’ products “inherently different, rather than confusingly similar.”

There are a few key takeaways with the results of this case.

First, despite the denial of a preliminary injunction, there is still the aspect of infringing on another’s trademark.  While the Court was adamant that it concluded that CSI’s FIGHT SPORTS mark was generic in nature, CSI still holds the USPTO trademark.  There was no action by Fight Media to cancel the trademark at the time of this writing.  Thus, CSI may still assert a claim for trademark infringement and dilution under the Lanham Act.  Certainly, Fight Media may assert the same defenses as it did with the preliminary injunction but the thresholds for proof differ.

Second, the issue of delay in filing the preliminary injunction was an issue by CSI.  The Report identifies the fact that the lawsuit filed by CSI occurred only after the trademark was denied by the USPTO.  The Court determined that due to the delay in filing despite knowing of the mark, it could not find that CSI would be irreparably harmed.  While CSI indicated that it was seeking to negotiate some sort of settlement, the lack of diligence in moving forward once it knew of the presence of the United States was an error.  The delay in time underscores the need to be vigilant in one’s mark.

Third,  CSI did not provide concrete evidence of harm.  The failure to provide empirical evidence that it lost business and/or profits due to the presence of a mark that would have likely confused consumers was an error.

Fourth, CSI did not follow up a letter from the Defendants regarding a cease and desist letter that the New York company sent it in 2007.  The letter, per the Court record, stated that it did not respond to correspondence from the Defendants.  If it had protected its right by responding to Fight Media stating that it was reserving its right to bring up the issue at a later date, this may have provided the necessary protection for a possible future lawsuit.

Finally, the mark FIGHT SPORTS and THE FIGHT NETWORK are considered the weakest of most registered marks due to the fact of its descriptive nature.  Trademarks that are fanciful, arbitrary or suggestive are considered the strongest in terms of marks.  At the time of the filing with the USPTO, that may not have been the case.  But, the Defendants were provided persuasive evidence that the terms were generic in nature.

Adidas opposes ELeague mark for use of 3 stripes

Adidas has filed a Notice of Opposition against Turner Sports, Inc. for the application of its E mark which includes three parallel stripes in a diagonal as its logo.  The logo is to be used for its Esports league, ELeague, which has found a home on TBS.

In its application, it states that the mark “consists of The letter E formed by three slanted parallel lines.”

The application, filed on June 9, 2016, the goods and services are for:

Marketing services, namely, promoting the goods and services of others by allowing sponsors to affiliate their goods and services with participants or exhibitions in the field of electronic sports; online retail store services; retail store services featuring virtual goods, namely, clothing for use in online virtual worlds; association services, namely, promoting the interests of participants in the field of electronic sports; organizing, scheduling, conducting, and promoting exhibitions in the field of electronic sports; promoting public interest in the field of electronic sports; providing a forum to showcase, display, demonstrate, and promote ideas, products, and services in the field of electronic sports

A Notice of Opposition was filed on October 10, 2017.  The 139-page Notice of Opposition which mainly includes exhibits essentially points out that the 3 stripes would likely be confused with the proposed applicant.  It alleges likelihood of confusion and dilution per the Lanham Act.

This will be an interesting case to follow as Adidas is asserting that it is “The Brand with the 3 Stripes.”  Yet, the Turner logo differs despite the use of the three stripes on the Adidas brand being used in a variety of ways.  The Turner logo seems to be affixed in a three-line parallel slant.  There is a question of whether these two marks would be in the same class and whether there would truly be a likelihood of confusion.