Honus Wagner (aka the Flying Dutchman) was one of early baseball’s great players. He was actually among the original five inducted into the Baseball Hall of Fame in 1936 – along with Ty Cobb, Babe Ruth, Christy Mathewson, and Walter Johnson. In 1905 he joined with Louisville Slugger to produce the first baseball bat with a player’s signature, also becoming the first athlete to endorse a commercial product.
(This baseball card sold for $2.8 million in 2007. It later came out that it had been slightly touched up and wasn’t quite as mint as advertised.)
Now a company he started (Honus Wagner Co.) to sell sporting equipment after retiring from baseball is suing the maker of Louisville Slugger (Hillerich & Bradsby Co.) for infringing on the HONUS WAGNER mark. However, Honus Wagner Co. failed to ever register the mark.
Hillerich applied for an ITU registration for the mark in 2011 and the mark went unopposed. This application blocked Honus Wagner Co. from registering the mark when they attempted to do so in 2014, despite having used the mark continuously since 1922 (according to the complaint). I’m not sure why the company waited so long to register the mark, but it did. As Wagner died in 1955, presumably any post-mortem rights of publicity expired a number of years ago. Apparently it wasn’t monitoring others use of the mark very well either as it failed to oppose Hillerich’s application. So, in 2014 when Honus Wagner Co. finally got up to the plate, it discovered it wasn’t quite the batter that Wagner was.
Hillerich received numerous extensions to file its statement of use before finally filing it in January 2015. Shortly thereafter the PTO issued an office action requiring evidence of an association with Wagner in order to avoid a 2(a) refusal for suggesting a false connection.
Now, Honus Wagner Co. is hoping it can field hits a little better than it swings. It has brought suit in the Southern District of Florida seeking injunctive relief and damages for Hillerich’s use of the HONUS WAGNER mark on a line of bats. This is one of those interesting situations in which what is potentially a senior user must rely on its common law trademark rights to prevent a junior user – that almost has the registration – from continuing to use the mark. I don’t know the details on either company’s use of the mark, but with Hillerich’s relationship starting in 1905, this may come down to which side has neglected to clean out their basement.
It’s not clear how wide spread Honus Wagner Co.’s use has been. Perhaps the two will come to some licensing agreement. Maybe Hillerich’s application will ultimately be denied. Or maybe the geographic area in which Honus Wagner Co. has rights is small enough that Hillerich will be content to box Honus Wagner Co. in that area and take the rest of the country. No matter the outcome, this case shows why it’s important to know who’s using the mark before you register, and not to wait 92 years to register your mark.