-Wes Anderson, Attorney

How much trouble can a double-U make?  If you’ve been following this blog over the years, you know the answer: quite a lot.

This blog has written extensively on the trials and tribulations that may accompany single-letter trademark applications, and the letter “W” in particular.  You may then conclude, quite correctly, that a whole lot of businesses lay claim to the letter “W” in one form or another.  A quick check of the Patent and Trademark Office database yields no fewer than 1,092 applications or registrations for the letter “W” (or, in some cases “WS” where the letters are intertwined).  Of those, there are 919 live registrations for “W.”

The latest chapter in the saga of our alphabet’s 23rd letter sets an app developer on a collision course with two of Major League Baseball’s most iconic franchises.   Evolution Finance, Inc. applied to register the stylized W mark shown below, featuring a sans-serif “W” on a rounded square with a green gradient.  It uses the mark in connection with WalletHub, a “personal finance social network.”

The WalletHub application claims the colors green and white and identifies, among other services,  “creating an on-line community for users seeking financial information” that allows users to “compare financial products” and “engage in . . . social networking services in the field of personal finance.”  After amending the identification of services in response to an Office Action, the mark was published in October 2012.  Smooth sailing, right?

Enter the Chicago Cubs and the Washington Nationals.  The two ballclubs lay claim to the letter “W” as part of their team heritage.  For the Cubs, a blue “W” (for “Win”) flies on a white flag atop the Wrigley Field scoreboard when the Cubs are victorious, ostensibly so commuters riding the “L” train on the north side of Chicago can see whether their team won.   The Nationals, as we have previously detailed, use a loopy, cursive “W” as their primary logo, and also lay claim to a variety of more basic, sans-serif “W” marks as vintage or throwback logos.  Interestingly, it doesn’t appear that the Nationals are currently selling any “throwback” caps on their official store’s website — they all bear the cursive “W.”

The Cubs’ “W” Flag

In the opposition, the Cubs cited its registration for the W mark in standard characters for “fabric flags,” and the Nationals cited its registration for a stylized W mark that identifies “clothing, namely, caps.”  Of course, the clubs’ notice of opposition claims additional common-law services, “including but not limited to, baseball games and exhibits services and a variety of goods as services.”  We’re left to assume the “variety of goods and services” most closely overlaps with WalletHub’s offerings.

The Nationals’ Registration for the W (Stylized) Mark

A brief disclosure: I am deeply and irretrievably biased as a lifelong Chicago Cubs fan.  In college, I was among the many who draped that very white-and-blue “W” flag in my apartment.  But given their travails into free agency during that time, I would be hesitant to seek financial information from the Cubs, except for the price of a bleacher seat this season.  (as much as $66 for a Saturday in June, if you were curious).

The opposition has been fairly dormant since its filing in early 2013.  The last filing on record is an extension of time from December 2014, containing a lengthy report on the back-and-forth(-and-back-and-forth) settlement discussions among the parties.

Things must have turned south since then.   WalletHub turned to the court of public opinion last month and penned a blog post entitled “Major League Bullies: Teams Seek Hypocritical Trademark Ruling.”

WalletHub considers the pending opposition to be “frivolous corporate bullying” and “pure hypocrisy” given the myriad of coexisting trademark applications and registrations that identify the letter “W.”  WalletHub then takes a swipe at the Cubs, quipping that “very few people would associate the Cubs with W’s these days.” Ouch.

In a way, you can understand where the ballclubs are coming from — sports teams are among the nation’s most iconic brands.  And remember those 919 live registrations for the letter “W”?  It turns out that only four of those are for the “W” mark in standard characters — among them, the Chicago Cubs.   A standard character registration conceivably encompasses every possible stylization of the letter.  The Cubs also seem to be very cognizant of the importance of trademark rights — as the blog Uni-Watch has noted, they may be the only professional sports team to embroider the ® symbol onto the logo of its on-field jerseys.

So where will this one come out? Who gets the “W”?  It seems the WalletHub application is more than just a letter – its background shape and color gradient form a stylization onto themselves separate from the letter.  This gives WalletHub’s mark features that distinguish it from a standard-character “W.”  When combined with the difference between the identified services, WalletHub has a fighting chance — if it can stomach an opposition.  Otherwise, here’s hoping for an amicable settlement — after all, it’s just two “U”s put together.  What harm can it do?

  • Why doesn’t WalletHub just file to cancel the Cubs’ W mark? If a “W” is flown on a flag to signal a “win” in a baseball game, shouldn’t it be barred from registration as merely informational? See T.M.E.P. 1202.04 (“Slogans and other terms that are merely informational in nature, or common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable.”). Secondary meaning is irrelevant. Id. (“The applicant cannot overcome a refusal of trademark registration issued on the ground that the matter is merely informational by attempting to amend the application to seek registration on the Supplemental Register or pursuant to §2(f).”)

  • Wes Anderson

    That’s a great point — interestingly, the Cubs’ application received an Office Action on the grounds that the “W” was “merely ornamental” — which the Cubs overcame by establishing secondary meaning. The evidence they cited made it quite clear that the “W” stood for “win.” I think if the Cubs had attempted to register the mark in connection with “sports and entertainment services,” then the “W” mark is almost certainly unregistrable as merely informational.