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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.

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.

“Mean Green” gets stern with ESPN, Michigan State

The North Texas Mean Green is protective of its nickname and was willing to send a cease and desist to ESPN and Michigan State when it referred to the Michigan State Spartans as the Mean Green in a recent commercial promoting its matchup with Michigan.

North Texas has a trademark on its nickname and it aimed to protect it when it let ESPN and Michigan State know. However, instead of a prolonged standoff, the cable network backed down and the Athletic Director for Michigan State reached out to North Texas administration.

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This incident shows what a simple notification to an alleged infringer can do to save on legal fees.  It’s clear that ESPN was in the wrong and it was likely a simple oversight.  North Texas was professional in pointing out the infringement.  For its part, MSU and ESPN acknowledged the issue instead of attempting to argue otherwise. Sometimes being straightforward may be the best cure for an alleged infringer.

Cal rebuffs Chicago Bears on ‘Go Bears’ trademark

Go Bears belongs to Cal.  This, after the NFL’s Chicago Bears attempted to use the trademarked phrase as part of its twitter hashtag this season.

NFL teams have rolled out team hashtags.  When typed in, it would show a little logo of the team.

However, Cal had the phrase trademark in 2014.  It appears that the Chicago Bears are backing down from a potential legal fight with the Bay Area school.

This is not the first time that the Chicago football team has fallen to a college trademark.  Last year, it attempted to use the #BearDown mark.  Of course, that is trademarked by the University of Arizona.  The football team has the Bear Down moniker on its field at has been a long-time phrase.

The issue reflects a good cause for due diligence in having researched the phrase or mark you use in a marketing campaign.  Proper review will help eliminate potential PR faux pas like this.

The Midwest pro team is now 0-2 to Pac 12 teams.

Baseball Bat Makers Swing in Court in Trademark dispute

A battle of bats took place in the Eastern District of Missouri featuring two of the biggest makers of baseball bats in the industry.  Rawlings Sporting Goods Company sued Easton Diamond Sports alleging that Easton was infringing Rawlings 5150 model bats with an S150 model it was rolling out for 2018.

A day before Easton’s release of its bats, the Court denied a Temporary Restraining Order filed by Rawlings to halt the rollout of the S150 models.

Rawlings claimed that the S150 designation would likely cause confusion with the 5150 model.  In its opinion, the Court held there to be little likelihood of confusion between the two models.  Notably, the Court indicated that both brands used the name in addition to the model designations.  Also, in its marketing and point of sale materials, both used the “Rawlings” or “Easton” name to avoid any confusion with other brands.  Thus, the “sub-marks” on the baseball bats take on a “subservient role to the house brand.”

The Court also conducted a visual analysis of the marks and the “S”150 was not deemed confusing to the 5150 model.  It also did not believe an “untoward purpose” in the use of the S150 mark since other models used by Easton included an “S” before the model.  Thus, there was no belief of an intent to cause confusion.

In its order, the Court noted that Easton’s S150 was meant to be a “low-end” model while Rawlings’ 5150 was a “high-end” bat.

The ruling by the Court on the TRO does not mean that the lawsuit is over but Rawlings swung and missed at its first opportunity to halt its rival from selling its new models.

Rawlings v Easton by JASONCRUZ206 on Scribd