Category: Trademarks and Sports

Learn more about trademark and sports at the trademark access blog.

Nike Opposes Spikeman

Nike Opposes Gronk’s Trademark Bid on Spikeman Silhouette Logo

Rob Gronkowski is hard to stop. Whether it’s on the field, where he is an All-Pro tight end, or off, where he has developed a name for himself as a highly paid endorser (including for Nike) and as a businessman through his own ventures, he is not going down easy. But Nike is hoping that it will be able to tackle Gronk at the US Patent & Trademark Office before he is able to register his new “Spikeman” logo, which Nike says is too similar to its Jordan brand “Jumpman” logo.
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SCOTUS Rules in Favor of THE SLANTS Trademark

In a landmark trademark law ruling, the Supreme Court of the United States held in Matal v. Tam that the Lanham Act’s disparagement clause is facially unconstitutional under the First Amendment’s Free Speech Clause. This case will have significant implications for other case, such as the series of cases addressing the registrability of the mark REDSKINS for an NFL football team. At issue in Matal v. Tam was application of 15 U. S. C. §1052(a) to Simon Tam’s application for registration of the mark THE SLANTS for “entertainment in the nature of live performances by a musical band.” Section 1052(a), also known as the disparagement clause, provides in relevant part that a trademark may not be registered if it:

“Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute. . .”

Simon Tam formed an Asian-American dance-rock band The Slants. The band’s name was allegedly chosen as a way to “reclaim” the term and drain its denigrating force as a derogatory term for Asian persons. However, when Tam filed an application with the United States Patent and Trademark Office to register THE SLANTS as a trademark, registration was refused on the alleged basis that the mark is disparaging. According to the examining trademark attorney, THE SLANTS is disparaging because the “likely meaning of “THE SLANTS” [is] a negative term regarding the shape of the eyes of certain persons of Asian descent.”

Tam argued in response that “[f]undamentally, Applicant’s response is that in contrast to all disparagement-based refusals to register cited by the Examining Attorney, the applied-for mark “THE SLANTS” has meanings other than the disparaging meaning that is the Examining Attorney deemed “likely,” the word “slant” being a common English word.”

In the end, the examining trademark attorney, obviously, did not agree. This case has a lengthy history, but there were several back-and-forth exchanges between the examining attorney and Tam’s counsel. After a final refusal was issued by the examining attorney, Tam appealed to the U.S. Trademark Trial and Appeal Board (TTAB). But the TTAB affirmed the examining attorney, and the TTAB decision was also appealed to the U.S. Court of Appeals for the Federal Circuit. However, in a surprising turn of events, an en banc Federal Circuit found the disparagement clause facially unconstitutional under the First Amendment’s Free Speech Clause.

On further appeal, the U.S. Supreme Court ruled 8-0 in favor of Tam’s right to register his mark THE SLANTS. Arguments in support of the disparagement clause suggested that it “encourage[es] racial tolerance and protect[s] the privacy and welfare of individuals.” Judge Alito responded that:

“But no matter how the point is phrased, its unmistakable thrust is this: The Government has an interest in preventing speech expressing ideas that offend. And, as we have explained, that idea strikes at the heart of the First Amendment. Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate.’”

The holding in Matal v. Tam will have a significant impact on trademark prosecution practice before the USPTO. As noted above, it will also have a significant impact on the series of cases seeking to invalidate trademark registrations for the REDSKINS mark held by the well-known NFL professional football team. In view of the Supreme Court decision, one would expect that the REDSKINS NFL football team should prevail in preserving its registrations for the REDSKINS trademark.

Adidas Puma Trademark Dispute

Adidas and Puma Tangle over Use of Stripes on Soccer Cleats

Adidas and Puma share a long and entangled history. In the late 1940s, the two companies were started by German brothers Adolf (Adi) Dassler and Rudolph Dassler after a family feud led the brothers to part ways. Adidas was registered on August 18, 1949 by Adi, following a family feud at the Gebrüder Dassler Schuhfabrik company between him and his older brother Rudolf. Rudolf established Puma before Adi established Adidas. The companies quickly became business rivals. To this day, the companies are still headquartered in the same German city of Herzogenaurach and continue as rivals. This familiar history is behind Adidas assertion in a recently filed a trademark infringement suit against Puma that the alleged trademark infringement shouldn’t be seen as innocent. Continue reading “Adidas and Puma Tangle over Use of Stripes on Soccer Cleats”

black mamba trademark fight

Kobe Bryant Asserts Rights Against Black Mamba Trademark Application

Kobe Bryant was an outstanding defender on the basketball court. Now, in his post-basketball business career, he’s looking to do some defending of his “Black Mamba” brand after someone else recently filed a trademark application on the name. With only a pending trademark application of his own at the US Patent & Trademark Office, Kobe is relying on common law trademark rights to oppose the new filing. Continue reading “Kobe Bryant Asserts Rights Against Black Mamba Trademark Application”

las vegas golden knights

Las Vegas Golden Knights NHL Team Checked by USPTO

While Las Vegas has always been an alluring destination to base a pro sports franchise, owners have been reluctant to come to Sin City due to concerns over the ease with which gambling might influence outcomes. But that’s soon to change with the announcement that NHL hockey will be coming to Las Vegas. The team will begin play in 2017 and owners announced the team name as the Golden Knights, but whether that name will survive remains to be seen since the team recently received rejections to their trademark applications by the United States Patent and Trademark Office (USPTO). Continue reading “Las Vegas Golden Knights NHL Team Checked by USPTO”

Converse Trademark Lawsuit

Converse Wins Trademark Victory at ITC – Sort of

Converse’s Chuck Taylor shoes are one of the oldest and most recognizable athletic shoes around. Designed specifically for basketball players, the shoes were introduced in 1917. Converse says that it has sold more than a billion pairs of the shoes worldwide since then. However, even though the shoes have a long history and a distinctive look, they don’t have exclusivity on every design element incorporated into the shoe. That’s the ruling from the US International Trade Commission after Converse filed a trademark complaint with the ITC in 2014.

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4 Stripes you’re out! Adidas Sues Designer Marc Jacobs

Adidas has been around for a long time and spent a lot of money promoting its 3 stripe logo. Part of its strategy to protect its brand includes trademark registration. The German company owns numerous U.S. trademark registrations on the various incarnations of its brand. So when fashion designer Marc Jacobs recently released a line of clothing that included 4 stripes down the sleeve, Adidas’ trademark attorneys quickly went into action, filing a trademark infringement lawsuit in Oregon federal court.
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ACLU Supports the Washington Redskins Trademark

Although the team has decades of history, many people find the name of the Washington professional football team offensive. The Trademark Office sided with this opinion when it cancelled the Washington Redskins’ trademark registration last summer. The Office cited federal trademark law’s prohibition on the registration of disparaging marks. In spite of this latest obstacle however, the Redskins are fighting this ruling tooth and nail, and they now have a new supporter in their corner.

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Under Armour Sues Salt Armour

240px-Under_armour_logo.svgSporting apparel and equipment manufacturer Under Armour, has rapidly grown into a heavy hitter in the athletic gear market.  Started in 1996 by University of Maryland football player, Kevin Plank, out of the back of his car, the company has grown to challenge the likes of Nike and Adidas.  Part of the company’s explosive growth has been due to marketing and branding.  Before hitting the big time, Plank wisely filed a trademark application on Under Armour in 1996, which received a trademark registration in 1999.  Armed with this trademark registration and a desire to protect the brand, Under Armour recently filed a lawsuit against Salt Armour, Inc. for trademark infringement. Continue reading “Under Armour Sues Salt Armour”

Here Comes Johnny Cleveland: Manziel Seeks Trademark Registration on New Nickname

Johnny Manziel has yet to play in a regular season NFL game for his new team, the Cleveland Browns, but judging by his recent trademark application he seems to have long term plans in town. The much hyped quarterback filed a trademark application on the name “Johnny Cleveland” in the class covering athletic apparel. While it remains to be seen whether Manziel will be successful on the field, he is no stranger to protecting his celebrity image. The Johnny Cleveland trademark application is Manziel’s 10th filing.

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