–Dan Kelly, Attorney
Remarkably, this is not a new promotion for World Wrestling Entertainment. No, a few outlets reported last week that WWE has opposed The American Wine Foundation’s application to register the trademark SOMMELIER SMACKDOWN for use in connection with “Entertainment services, namely, conducting contests in the field of food and wine pairing; Entertainment services, namely, wine and food tastings at which attendants taste food and wine pairings to determine which wine expert better pairs food and wines.” For those pop-culturally challenged among you (as I sometimes am), WWE owns several registrations for SMACKDOWN for use in connection with entertainment services, namely, wrestling events.
As reported at SFGate, a spokesman for WWE claims that WWE coined the term “smackdown.” That’s a big claim, and one easily exploded by reviewing the voluminous evidence produced by the Trademark Office in the course of WWE’s prosecution of an early application for SMACKDOWN demonstrating widespread use of the term in connection with sports that predates WWE’s first use of the term (1999) and its claimed date of coining (1998, by Dwayne Johnson, a.k.a, “The Rock”). WWE dodged the descriptiveness issue by arguing in the alternative that it had acquired trademark distinctiveness in SMACKDOWN as applied to its entertainment services.
This promises to be an interesting case, as there appear to be factors that favor both sides. For WWE, the SMACKDOWN mark appears fairly strong, despite its descriptive roots. For the Wine Foundation, I suspect that it will be able to make a good case that its entertainment services appeal to an entirely different consumer market than WWE’s entertainment services. (WWE has also argued that the Wine Foundation’s mark dilutes its SMACKDOWN mark–an issue that also may have legs.) For the time being, we’ll watch to see if this match goes more than one round.
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