Mark Image

To sports fans of this university, December has been a big month because their beloved team finished the 2009 regular football season undefeated (13-0) once again, winning yet another post-season BCS bowl game bid. Next month will be even bigger news if their WAC team happens to defeat TCU in the Tostitos Fiesta Bowl. To trademark types, however, the biggest news of all is what this university was able to accomplish last month at the U.S. Patent and Trademark Office.

You might be surprised to learn (I was) that the above image is the drawing associated with the single color trademark ("the mark consists of the color blue used on the artificial turf in the stadium") that this university was able to federally register in connection with: "Entertainment services, namely, the presentation of intercollegiate sporting events and sports exhibitions rendered in a stadium, and through the media of radio and television broadcasts and the global communications network." Hat tip to Brad Frazer of the Hawley Troxell firm, in Boise, Idaho.

Quick question, how does one render entertainment services in connection with a single-color trademark through the "media of radio broadcasts"? Does oral reference to the blue turf on the radio constitute use of the mark in commerce?

In any event, the identity of the university in question, is revealed below the jump, and it is, of course:

Boise State, a/k/a the Broncos, a/k/a The Blue, whose teams play on what some call Smurf Turf in Bronco Stadium (not to be confused with Invesco Field at Mile High, where the similarly-colored blue and orange Denver Broncos play their NFL football games on regular green, grass turf):

File:Bronco Stadium Blue Turf October 31 2009.JPG

As interesting as the registration of the blue turf trademark is, the timing of the decision to federally register is as well. Why? On September 9, 2008, the NCAA reported that Division II University of New Haven (located in Connecticut) "adorned their new blue field — one of only two in the country — at Ralph F. DellaCamera Jr. Stadium with a 50 x 30-foot Charger logo September 8 in preparation for the return of the UNH football program and membership in the Northeast-10 Conference." Two weeks later, on September 23, 2008, Boise State filed for federal registration of the blue-colored turf trademark, claiming over twenty years of continuous use. Given this timing, is there a battle of smurf turfs likely on the horizon?

If so, here’s a question to ponder: Since Boise State didn’t seek federal registration until after UNH commenced use of its own blue-colored athletic turf in West Haven, Connecticut, Boise State doesn’t enjoy the substantial federal registration benefit of nationwide constructive until its later filing date, so the question becomes, does Boise State have enforceable prior common law rights in West Haven?

Boise State’s Bronco Stadium apparently has sported blue-colored artificial turf since 1986, the first being blue-colored AstroTurf (1986-2001), then blue-colored AstroPlay turf (2002-2007), and finally, blue-colored FieldTurf (2008-present). So, might the answer depend on how many Boise State home games have been televised and/or viewed over the years in West Haven, Connecticut, or might it depend on whether The Humanitarian Bowl has been televised and/or viewed in a consistent enough manner in West Haven to acquire distinctiveness and establish prior common law rights there?

While it may be hard to imagine that Boise State home football games have been consistently and sufficiently aired or viewed in Connecticut to establish prior common law rights there, Boise State’s Bronco Stadium also has been home to The Humanitarian Bowl since 1997, so there has been more than a decade of post-season bowl-game football played on Boise State’s blue-colored turf. Now, how many of those games have been aired or viewed in West Haven, is beyond me.

With respect to validity, might there be a question of some yet-to-be-identified functionality, since one artificial turf manufacturer reports that "blue" is "probably the most popular" color choice for artificial turf? It would be interesting to explore the reason for this popularity.

On a broader note, will Boise State’s success in the U.S. Trademark Office lead others to follow along this trademark path?

I, for one, would love to watch the beloved teams from my alma mater, The Iowa Hawkeyes, play football in Kinnick Stadium on a yellow-colored turf — perhaps canary yellow, and 3M could sponsor a new post-season bowl game (not that we need another), let’s call it The Post-It Bowl!

The problem is, of course, in January, and even December, Kinnick Stadium is likely to look rather white no matter what the underlying turf color may be.  

  • Anonymous

    Is the manufacturer a contributory infringer when it installs blue turf on a different field? Does the manufacturer have any claim against Boise State for interfering with the sale of probably the most popular color of turf?

  • Dear Anonymous,
    These are really great questions — they occurred to me too, so I’m glad you asked them. Unfortunately, I don’t think we have anywhere near the facts needed to answer them.
    I’d certainly be interested to see any contractual terms between Boise State and the manufacturers of their artificial turf over the years.
    It is worth noting that Boise State first had Monsanto’s AstroTurf installed in the color blue in 1986, then the successor to that business appeared to provide the AstroPlay artificial turn in the color blue in 2002, and finally, in 2008 a Canadian firm called FieldTurf Tarkett provided the currently used blue turf under the FieldTurf brand.

  • James Mahoney

    And Steve, reprising your Post-It Yellow column, what particular color blue did they trademark? Or did they cover the entire blue spectrum? Can we have a West Haven Blue of a different shade than the Boise Blue?
    And regarding the manufacturer question, do any of the manufacturers have a trademark blue color that they’ve been selling? And if they do, would that have come up in the trademark discovery process?
    And is it limited only to football stadia, or does it also cover basketball, volleyball, baseball, etc.?
    Sheesh, thinking about this stuff is enough to give you the blues…

  • James, great questions.
    The registration obtained by Boise State simply covers “blue” — so it apparently covers all shades, so watch out West Haven!
    There is a procedure in trademark law called “a partial cancellation proceeding” that permits someone who believes they would be damaged by a overbroad registration to narrow its scope to exclude items no longer sold under the mark or to introduce and compel channels of trade limitations into the goods/services description in the registration.
    I have never seen this procedure used to modify the description of the mark, only goods/services descriptions, but West Haven will probably explore the applicability of the “partial cancellation” procedure if Boise State comes knocking, because their shades do appear to be different.
    Although I’m not certain because I haven’t checked, I doubt the manufacturers have registrations on any colors for artificial turf. The one I linked to from the U.K. offers several different color options, so, it would be hard to show that any one of their colors stands out from the pack of available colors and actually functions as a trademark for artificial turf.
    You are correct that the Boise State “blue” registration is limited to sporting events rendered in a stadium — so that would proably cover football, track and field, and presumably soccer — but only if played in intercollegiate competition, they seem to have intentionally excluded professional sports, most likely to avoid opposition from the Denver Broncos and the NFL, if I had to wager a guess.