Search results for: baseball

The weather is finally getting warmer up here in Minnesota and it’s a great time to watch baseball, as I’ve been doing frequently of late. It’s been fun watching my home team, the Twins, enjoy a strong start to the season (anything above .500 is huge after our record-breaking disappointment last year), with our younger players making big improvements.

You may think that with the baseball season now in full swing, the MLB might be too busy to aggressively enforce all of its trademarks. You would be wrong. Major League Baseball Properties and the Office of the Commissioner of Baseball (“Opposers”) filed a notice of opposition last week before the Trademark Trial and Appeal Board against the registration of the word mark FOR BASEBALL USE ONLY (Application Serial No. 87153257).

The individual applicant, Joshua Morell filed the application last year, and it published for opposition in January, without any office actions issued. The application identifies numerous clothing goods in International Class 25,  including for example, hats, shirts, rainproof jackets, and sweat shirts.

The Opposers assert a likelihood of confusion under Trademark Act Section 2(d). The bases for this opposition are loaded with a barrage of baseball-related registrations owned by Opposers (or their related/affiliated companies), as listed below. You’ll see it is quite a long list, but it’s worth a glance through to consider the Opposers’ strategy and their chance of success. I won’t drone on with all the identified goods and services, but many include, for example, clothing, entertainment services, and promotion services.

  • Word Mark Registrations
    • MAJOR LEAGUE BASEBALL (Reg. Nos. 1528807, 1620020, 3326191, 3862153)
    • MAJOR LEAGUE BASEBALL ALL-STAR FANFEST (Reg. No. 1719587)
    • MAJOR LEAGUE BASEBALL PRODUCTIONS (Reg. No. 1745625)
    • THIS WEEK IN BASEBALL (Reg. Nos. 2743153, 2769617)
    • OFFICIAL BANK OF BASEBALL (Reg. No. 3565847)
    • THE BASEBALL CHANNEL (Reg. No. 3592912)
    • THIS IS BEYOND BASEBALL (Reg. No. 3746838)
    • ALL OF BASEBALL (Reg. Nos. 3779854, 3849163)
    • BASEBALL EVERYWHERE (Reg. No. 3845051)
    • R.B.I. BASEBALL (Reg. Nos. 3864816, 4687412, 4687414, 4750683, 4971324)
  • Design Mark Registrations
    • MAJOR LEAGUE BASEBALL & Design (Reg. Nos. 955967, 1055317, 1055318, 1055319, 1057260, 1057264, 1617698, 1625617)
    • R.B.I. BASEBALL MLB.COM & Design (Reg. Nos. 4758577, 4758578, 4758579, 4758580)
    • BASEBALL & Design (Reg. No. 1220334)
    • BASEBALL FEVER CATCH IT! & Design (Reg. No. 1230519)
    • MAJOR LEAGUE BASEBALL HOME VIDEO & Design (Reg. No. 1741015)
    • OFFICIAL GAME OF SUMMER BASEBALL & Design (Reg. No. 2791550)
    • NATIONAL LEAGUE OF PROFESSIONAL BASEBALL CLUBS SINCE 1876 & Design (Reg. Nos. 3644993, 3648872)
    • BASEBALL IQ MLB NETWORK & Design (Reg. No. 4294588)
    • LAS GRANDES LIGAS DE BEISBOL (Translation: “Major League Baseball”) (Reg. Nos. 2976531, 2976538)
    • SABOR A BEISBOL (Translation: “Flavor of Baseball”) (Reg. No. 3700391)
    • Design-Only (Reg. No. 2573503)
  • Opposers also cited two pending applications:
    • ONE BASEBALL (Serial. No. 86783219)
    • WE ARE BASEBALL (Serial No. 87095504)

In my view, some of the registrations cited by the Opposers are a bit off-base regarding a likelihood of confusion, particularly some of the design registrations. Quantity is not always better than quality. Even for the word mark registrations, the fact that those registered marks contain the descriptive or generic word “BASEBALL” (which, by the way, is disclaimed in many of the asserted registrations), is not necessarily sufficient for a likelihood of confusion based on the applicant’s arguably dissimilar mark FOR BASEBALL USE ONLY.

The strategy here seemed to be to assert any registrations owned by Opposers that contain the word “baseball.” Opposers even go so far as asserting in the Notice of Opposition that the public has come to recognize and refer to Opposers and their related entities “by the short-hand nickname ‘Baseball’.” That’s quite an interesting contention. Do you agree?

The applicant Joshua Morell has stated that “I am by no means damaging [the MLB] brand and none of the marks are even close to being identical to any of the MLB marks.” Morell has also explained that he is building a family of “Use Only” brands for athletes in different sports–he has also applied to register the marks MARATHON USE ONLY and RUNNING USE ONLY, among others.

Who do you think will prevail in this opposition proceeding? Stay tuned for updates.

Across the United States this week, fans rejoiced as baseball returned. Teams took to the diamond and played the first games to count since last year’s World Series. Players, coaches, and fans all turned the page on last season, starting with a clean slate and an undefeated record. But while the players battled on baseball diamonds across the country, a different type of “diamond” battle is taking shape in a New York court.

Cooperstown Bat Co. makes and sells bats with the mark PRO DIAMOND. Both the COOPERSTOWN BAT mark and the PRO DIAMOND mark appear on Cooperstown’s bats, as shown in the photograph below.

Cooperstown Diamond Pro Bat

On June 9, 2015, Cooperstown filed an application register its PRO DIAMOND mark with the U.S. Patent and Trademark Office. However, on Sept. 27, 2015 the Examining Attorney issued an Office Action refusing registration, finding that the PRO DIAMOND mark was likely to create confusion with prior registrations comprising the term DIAMOND in both standard character form and stylized variations, all owned by Diamond Baseball Company (doing business as Diamond Sports). Diamond Sports’ registrations covered other baseball equipment, including baseballs, gloves, protective gear, clothing, and bags.

On December 1, 2015, Diamond Sports sent Cooperstown a cease and desist letter, demanding that it withdraw the application. When the parties were unable to reach an agreement, Cooperstown filed a declaratory judgment action in U.S. District Court for the Northern District of New York, requesting a ruling that Cooperstown’s use of PRO DIAMOND does not infringe upon Diamond Sports’ rights in its DIAMOND mark.

The complaint alleges that the term is generic for “baseball fields” and that the word has a well-known association with baseball generally. Due to this meaning, Cooperstown claims that a number of third-parties use marks that include the word DIAMOND in connection with baseball-related goods and services. Cooperstown included the table reproduced below as a sample of these third-party marks (some of which are registered). Relying on this evidence, Cooperstown alleges in its complaint that DIAMOND “is generic and/or descriptive when used in association with baseball-related goods and services” and that the term “is not a strong or distinctive mark in the field of baseball.”

Third-party marks - DJ Action

Cooperstown also argues that there is no likelihood of confusion due to Cooperstown’s use of its COOPERSTOWN mark on the bats. Notably, the term is not included in its application to register the PRO DIAMOND mark and therefore would not be considered as part of the likelihood of confusion analysis as to the mark identified in the application (as opposed to the mark as used in commerce).

Cooperstown’s arguments have some merit. The term “diamond” is, at a minimum, highly suggestive of a baseball diamond. It could potentially be descriptive in the sense that DIAMOND describes the intended purpose of the goods – to be used on baseball diamonds. But the evidence is not overwhelming. A quick search of the U.S. Patent and Trademark Office database revealed a number of third-party registrations that contain the term DIAMOND in connection with some type of baseball product or service. However, only two registrations identify sporting equipment.

Further complicating matters is that Diamond Sports’ registrations for their standard character marks have been registered for more than five years, meaning that they cannot be challenged on the ground that the marks are merely descriptive. As a result of the foregoing, Diamond Sports’ also has a reasonable basis for its objections to Cooperstown’s attempt to register the mark. Even if Cooperstown were to ultimately prevail, the disparity between the parties’ legal positions is unlikely to justify an award of attorney’s fees.

If Cooperstown prevails, it could obtain a registration for the PRO DIAMOND mark, a mark which Cooperstown considers to be so descriptive and potentially generic that “it is not strong or distinctive.” In light of this, is the investment in a federal court action worth the potential payoff?

A preliminary clearance search prior to filing the application likely would have identified Diamond Sports’ registrations, and would have confirmed that, while there was an argument that the term DIAMOND is weak in the field of baseball generally, there was not significant evidence that the term DIAMOND was week in connection baseball sporting equipment specifically. The records of the U.S. Patent and Trademark Office suggst that an application was likely to receive a refusal. Would Cooperstown have been better off not applying to register the mark at all and instead “fly under the radar?” Filing the application and receiving a refusal ran the risk that Diamond Sports could learn of the Cooperstown’s use and send a demand letter (is it too late for a spoiler alert?).

While “hope springs eternal” is perhaps the most popular baseball quote at this stage of the season, I’m reminded of an equally well-known baseball maxim: never make the last out at third base. For those uninterested in baseball, it simply means don’t take unjustified risks. Even if you make it to third, you still need the batter to get a hit to score a run. Maybe by the end of the season we’ll know which maxim is more applicable to the PRO DIAMOND mark.

–Dan Kelly, Attorney

I have just made the happy discovery that the good folks over at FairWinds Partners, operators of the Domain Name Strategy blog, have another blog called gTLD Strategy. In this post this week, they have hinted that there may be more “.brand” applicants in this round of gTLD applications than many people have been expecting. They point to four entities that have announced plans to register a .brand domain name:  Canon, Hitachi, Star Hub, and the Australian Football League (AFL). Interestingly, though, they suggest that they are aware of many more likely .brand applicants who have not made public announcements.

I’ve previously commented on the likely Balkanization of the entire domain universe here. From a trademark standpoint, even so-called “generic” top-level domains have one root operator or registrar, which means that each TLD can be identified with a single source. This is the essence of a trademark. I think that it is a matter of time before there is competition over the quality of various TLD spaces. Marketing, pricing, and services will eventually become relevant to anyone’s choice about where to set up a virtual shop on the web (and we’ve started seeing it with, for instance, the .co space).

By way of reminder, March 29 is the deadline by which an entity must register with ICANN’s TLD Application System (TAS) so that the entity can apply for a new gTLD by April 12 (two deadlines for two different steps). More information is here. It also bears repeating that this is not like registering for myowndomainname.com with Go Daddy, which anybody with ten minutes and ten bucks can do. The application fee for a gTLD is $185,000, and there are some significant requirements for running a gTLD.  It is not trivial.  (There is a reduced fee program for public-interest applicants that have a financial need.  The reduced price is $47,000.)

The next big date to watch for is May 1, when ICANN plans to reveal all of the applied-for strings in this round.  It will then be time to evaluate whether defensive strategies are warranted.  More on that in May!

Almost forty years ago, that question prompted me to rethink my engineering path after three semesters, knowing an electronic circuits lab awaited my fourth.

Over winter break, thumbing through the University of Iowa catalog in my dad’s office, looking for an alternative, I happily discovered the pharmacy curriculum.

Had I known that law school would follow pharmacy school, perhaps a few years could have been saved in the serial approach to my 80s educational decade.

And, if a deep focus on trademark law had been in the crystal ball at the outset, shaving a full three years would have been possible, but believe me, no regrets.

This past weekend, I had the opportunity to reflect on the difference between series and parallel again, following the College of Pharmacy’s virtual ELB meeting.

In addition to the exciting things going on at UI Pharmaceuticals, other news reports tout the benefits of parallel work to bring a Covid-19 vaccine to market.

When time is of the essence, running parallel tracks to solve a problem is key. While a parallel approach necessarily produces some waste, the benefits of achieving the goal sooner are considered to outweigh any increased cost.

But when subsequent decisions can only be made best by knowing the outcomes of earlier decisions, actions, or events, calculated serial thinking is essential. Clearly, serial thinking is driving the decision whether and when to reopen society, as that decision only can be made in the context of knowing about the success or failure of last week’s efforts at flattening the curve.

Since these decisions are being made State by State and City by City, in some sense serial thinking is at work in parallel across various portions of the country.

As it turns out in trademark law, although hardly life and death problems or goals, or resembling anything close in terms of financial investment, the same principles that drive whether to use parallel thinking or serial thinking apply.

By way of example, before adoption and use, most often potential trademarks are searched, cleared and considered in parallel, not serially.

Given the variety of business factors that go into the decision of which mark to adopt and use, it is typical to determine the availability of several options at once.

In fact, when the stakes are high, the timeline is tight, and focus group testing is used to compare options, even intent-to-use applications may be filed in parallel.

Since the required bona-fide intent-to-use a trademark can be contingent on future and unknown events at the time of filing, parallel pursuits are plausible.

Parallel thinking is also used when considering where protection will be sought outside the United States, since international trademark law treaties allow for filings to be made in parallel within six months of the U.S. filing, and still benefit from the original U.S. priority date.

Other times, serial thinking is better suited to the trademark problem at hand.

For example, when conditions warrant, it may be wisest to file just a single application narrowly, dipping a toe in so to speak, only to dive in later once the waters of examination and third-party interest have been tested.

Another example where thinking long-term and serially is key is in protecting descriptive and non-traditional marks, where registration on the Supplemental Register is possible first, to be followed by registration on the Principal Register, often five years or more later, after building a record of acquired distinctiveness.

Further along the trademark life-cycle, brand owners may be happy to learn that delays in pursuing infringement actions can be explained when serially pursued.

In other words, courts have excused brand owners from suing multiple infringers at the same time; in this context, it can be reasonable to pursue one at a time.

Brand owners, when preparing to launch a new brand, do you prefer a series or parallel approach to trademark clearance?

Trademark types, how many parallel intent-to-use applications have you filed at once for the same planned product/service?

Baseball fans, what will the World Series look like in 2020?

Finally, how will “parallel play” be impacted by social distancing, if at all?

– Mark Prus, Principal, NameFlash

It’s that time of year! Baseball Spring Training is here! In honor of this, I’m looking at the fun names in Minor League Baseball. Some of them demonstrate the key principles of name development!

Minor League Baseball team names can be dull and boring. For example, there are some that just reflect the name of the parent Major League Team (e.g., Oklahoma City Dodgers, Syracuse Mets, Springfield Cardinals or Iowa Cubs). Yawn.

Or maybe they use a traditional animal such as the Burlington Bees or the classic Durham Bulls. These are a little more interesting, but not especially engaging.

Some teams are “swinging for the fences” with their names. When you think about what is important in naming your minor league team, you should focus on 3 things. Team names should be fun, relevant to the local population, and quirky enough to be memorable.

Here are some examples of team names that are “hitting it out of the park.”

  1. The Madison, Alabama, Rocket City Trash Pandas – Yes, there is a large NASA facility nearby (that includes Space Camp) in Huntsville so the “Rocket City” moniker is no surprise. The Trash Pandas came from a consumer contest and won the public vote by a large margin. The previous team name was the uninspiring Mobile BayBears. For the record, the other finalists were space-animal combinations: Moon Possums, ThunderSharks, Space Chimps, and Comet Jockeys.

    Even though the Trash Pandas won’t start playing until 2020, they broke the three-month sales record for merchandise sold by a rebranded Minor League Baseball team with over $500,000 in merchandise moved in nearly 3,500 online orders.
  2. The El Paso Chihuahuas – When the former Tuscon Padres moved to El Paso in 2013 the team ran a naming contest and fans chose between these finalists: Aardvarks, Buckaroos, Chihuahuas, Desert Gators, and Sun Dogs. While Team Management was initially a little apprehensive about the name, their focus on fun drove sales of Chihuahuas merchandise to record setting levels.
  3. The New Orleans Baby Cakes – According to a team PR release, the Baby Cakes name is “A tribute to the Mardi Gras king cakes where small plastic babies are sought after.” In the 2017 rebranding, the former New Orleans Zephyrs held a name-the-team contest and the finalists were Baby Cakes, Crawfish, King Cakes, Night Owls, Po’boys, Red Eyes, and Tailgators.

    Although the Baby Cakes name was initially met with mixed reactions, the team reported increased merchandise sales after the announcement and the rebrand set a record for online merchandise orders. Of note, the team awarded a free lifetime pass to any baby born in the state of Louisiana during 2017 and was entered into a raffle to win a full four-year tuition to a state college in Louisiana upon their 18th birthday in 2035.
  4. In 2019 the Amarillo Sod Poodles begin play – Per the team, Sod Poodles is a “pioneer’s nickname for ‘Prairie Dogs.'” This name emerged victorious in a “Name the Team” contest, triumphing over other selections rooted in Amarillo’s Texas Panhandle location: Boot Scooters, Bronc Busters, Jerky and Long Haulers.
  5. The Jacksonville Jumbo Shrimp – Previous renditions of teams in Jacksonville included the Jacksonville Expos (referencing the parent Montreal Expos) and the Jacksonville Suns. You’ve got to admit that the Jacksonville Jumbo Shrimp is an upgrade, even if it is an oxymoron.

    And speaking of oxymoron, the Jacksonville Jumbo Shrimp was an answer on Jeopardy earlier this year!Jacksonville Jumbo Shrimp✔@JaxShrimp

    Hey @thereal4smo – we loved your work on @Jeopardy tonight. Can we interest you in to coming to Jacksonville for a ballgame this season? Follow back and message us if you’re interested!

 

If you want to check out the bible of the weird team names of Minor League Baseball, check out this book: Root for the Home Team: Minor League Baseball’s Most Off-the-Wall Team Names and the Stories Behind Them.

Someday I’d like to work in the “Funnest” brand name category in America–Minor League Baseball Teams!

— Aaron Keller, co-author, The Physics of Brand, co-founder Capsule.us and Columnist at Twin Cities Business magazine.

There are so many hidden dangers in the process of naming any new offering — many of which can sneak up on you. We all like to believe we’ll see the danger before it meets us squarely in the forehead like a baseball bat, but the number of horror stories would indicate otherwise.

We’ve illustrated the Jimmy’s Johnnys in past blog posts, which certainly doesn’t create a good brand image for Jimmy John’s. But, really that’s a trademark issue, not a meaning issue. The meaning issues happen because there’s existing cultural meaning around a word that really isn’t good for your brand.

Rusty Taco dealt with it by moving to R Taco — not something this writer agreed with, but it happened. If you’re wondering what meaning existed with that name, try using your imagination before you search it on a work computer.

Fairview University, in their previous partnership had a minor issue when they turned the name into an acronym and stenciled it on hospital equipment. Do it yourself by writing those two letters in your whiteboard.

Or, the classic, Federal Express before they became FedEx, because in most countries “Federal” means government and slow, very, very slow. FedEx needs to be on time and certainly not slow — seeing the hidden meaning was essential.

Now, my own personal favorite today, the brand Sheetz, which is best consumed via this link, which tells me they know the brand name is amusing. Though, it does have a gastronomic implication that likely doesn’t create a smile in your mind after eating their foot long sub sandwich.

So, how do you avoid this?

Test the meaning with your audiences and there are simple rather inexpensive ways to get a clear picture of what your brand name means in culture. Even if you’ve got an existing brand name and culture has changed around it — like Tsunami Herbicide — a test might identify a need to change or refine your brand name.

Test your meaning before you test your job security. If you run into an amusing brand name story you think needs to be told, please pass it along to AaronKeller@capsule.us.

– Mark Prus, Principal, NameFlash

Summer is in full swing and that means baseball is top of mind for many of us. As a professional name developer, I continue to get a charge from the names of minor league baseball teams. Following up on my previous post on minor league baseball team names here are some controversial team names:

All of these names were controversial when they were introduced. Think about it…who wants to support the El Paso Chihuahuas? However, according to the brand name developer, Jason Klein of Brandiose, being controversial was the intent.

Today these franchises are successful examples of branding with great ticket sales and high merchandise sales.

Obviously, these are fun names and minor league baseball is all about fun. However, the genius in these names is not that they are just fun…the names leverage a bit of history and are familiar to the target audience.

Take the El Paso, TX Chihuahuas as an example. When the name was introduced there was an uproar in the local community about the derogatory nature of the name. Shortly thereafter, articles of support started appearing (such as this one) and the name became a rallying point.

The same thing was true with the Hartford, CT Yard Goats. Yard Goat is a relevant name in Hartford as “yard goat” is railyard slang for the switch engines or terminal tractors that shuttle train cars between different locomotives, and Hartford has a strong rail presence.

In the 19th century the leading industry in the Lehigh Valley was iron production, and therefore the IronPig name makes sense (“pig iron” is the term for the raw iron that gets melted down to make steel).

Using a “safe” name might seem like a good idea, but safe names are generally mainstream names that don’t stand out.

Finally, please recognize that I’m not advocating “alphabet soup” names that seem to be in vogue with startups. If a name has some relevance, but is different enough to be noticed, then it might be worth the risk in the long run!

Who do you think would win in a fight to the death: a beaver or an alligator? Sure, alligators seem scarier. They’re known for sharp teeth and strong jaws. They even have a 1980 horror movie about them called Alligator (Sidenote: the plot summary makes this sound like a must-see). Beavers? Not so much. Small and furry. They cut down trees. Sure, there was a television series called Angry Beavers, but it was a kids cartoon on Nickelodeon. Those beavers didn’t live in the Chicago sewers feasting on discarded animal carcasses from secret government laboratories testing mutating growth hormones (Again, this Alligator movie sounds like a must-see).

But what if this isn’t just a regular beaver? What if this is a beaver with an entire travel center full of deli stations, gasoline pumps, bathrooms, and over three decades of use? Oh! And did I mention the red baseball cap? It may not sound that scary to you, or alligators in general, but for the Choke Canyon Alligator, the fear might be starting to build. While an alligator likely gets the best of a beaver in the animal kingdom, the courtroom is an entirely different venue.

The animals underlying this dispute are beavers and alligators, but the parties are Buc-ee’s, Ltd., Shepherd Retail, Inc., and Harlow Food, Inc. The plaintiff is Buc-ee’s, the operating of a chain of Buc-ee’s travel stations throughout Texas. The defendants Shepherd Retail and Harlow Food operate a travel center under the name Choke Canyon, also in Texas. The dispute centers around Buc-ee’s claim that Choke Canyon’s design logo is similar to Buc-ee’s logo. A jury was impaneled earlier this week to help decide whether these logos are confusingly similar, but in the meantime, you can put on your juror hat and compare the parties’ logos yourself.

Thoughts? And to finish any potential arguments before they get started, this is an alligator, not a crocodile. Crocodiles can’t stick out their tongues (We’re not just a trademark blog, we’re a science blog, too.)

Here’s how Buc-ee’s summarized the similarity of the marks in the Complaint:

Defendants’ anthropomorphic and cartoon representation of the alligator as shown above in connection with a convenience store copies the most important aspects of the iconic BUC- EE’S Marks. Specifically, besides Defendants’ improper use of a friendly smiling cartoon animal, Defendants have copied the BUC-EE’S Marks with: (i) the use of a black circle encompassing the alligator (compare to the black circle around the beaver), (2) use of a yellow background (compare to the yellow surrounding the beaver), (3) use of the red-colored tongue of the alligator (compare to the red hat on the beaver), (4) prominent use of sharply drawn black edges for the alligator mascots (compare to the sharp crisp black edges defining the beaver, and (5) the use of letters in raised block font in the name “CHOKE CANYON”

This also isn’t the first trademark battle for Buc-ee’s. The beaver has already defeated two chickens (settled out of court):

And a rival (but hatless) beaver (settled out of court):

As a general matter, I think trademark plaintiffs are too easily branded with the label of a “trademark bully,” but this one seems like a stretch.

Granted, I’ve never been in any of either party’s stores. Perhaps the manner in which the marks are advertised adds to the confusion. In fact, Buc-ee’s also claimed that Choke Canyon’s trade dress infringed upon Buc-ee’s trade dress. The layout of a store or restaurant can be protectable trade dress under the Lanham Act. Even if the individual elements may not be protectable (for example, cactus in a Mexican restaurant), the overall selection and arrangement of even unprotectable elements may give rise to protectable trade dress.

Buc-ee’s claimed trade dress for its travel store-restaurant-convenience store-gas station consists of:

(a) consistent use of bell-gabled roof lines;
(b) Use of a red, white, yellow and black color scheme in store signage;
(c) Use of stone siding on the exterior of the store;
(d) Consistent use of a specific and distinctive fountain drink set up in the interior of the stores;
(e) In-store computer ordering kiosks;
(f) Horse-shoe shaped in-store carving stations;
(g) Open counter deli stations;
(h) Freshly prepared signature food choices;
(i) Consistent, prominent use of the BUC-EE’S Marks in signage above and on the products offered for sale;
(j) Large square footage;
(k) Numerous fuel pumps;
(l) Abundant and oversized parking spaces;
(m) Oversized bathrooms;
(n) A multitude of cashier stations;
(o) Entrances from three of the four sides of the building.
(p) Antique-looking displays;
(q) Country-themed signage; and
(r) Khaki paint colors.

I’m no expert in convenience stores, but most of the elements seem like generic elements of a travel center, restaurant, or convenience store. The antique and country themed signage is not as much of a required element for these types of store, but it hardly seems unique for a convenience store or gas station to have a country theme. Like the claim of trademark infringement based on the use of a cartoon character with a hat, I also have doubts as to the success of the trade dress infringement.

But is the combination of the two enough to nudge these claims over the edge into potential infringement? Based on publicly available information, the best I see from this case is that Choke Canyon may make consumers think of Buc-ee’s stores and beaver, but consumers dont’ seem likely to assume that that there is a connection between the two. While it can be a fine line, trademark law is pretty consistent that merely “calling to mind” is insufficient to establish trademark infringement. There must instead be a possibility of consumer confusion as to source, sponsorship, or some other connection.

It is possible additional facts will come out during trial to bolster Buc-ee’s claims. Perhaps there really was a pattern of intentional copying, from the yellow background of the circle logo, to the store layout, down to individual products being offered, like the purportedly famous “Beaver Nuggets” (aka, caramel corn). Stay posted for future updates as the trial proceeds and ends. We’ll also keep a lookout for comments from our neighbor to the east, the other cartoon Bucky:

 

 

“It just kind of spontaneously happened. Nobody at a production meeting said, ‘OK, now we are going to start circling Twins fans at the ballpark.’ It’s just something that happened spontaneously that has caught fire.”

— Dick Bremer, 2002

Although we still have snow on the ground here in Minnesota, spring is officially here and Twins baseball is about to start.  The Twins take on the Orioles for their first game of the season tomorrow, and the home opener at Target Field is April 5 against the Mariners.

Yesterday, Twins fans were alarmed when long-time color commentator and fan favorite Bert Blyleven announced on Twitter that his beloved “Circle Me Bert” on-air element in which he circles fans with a telestrator, was being replaced by a related Minnesota Lottery concept called the “Winners Circle.”  Fans were in an uproar.

But it was a false alarm – or at least, Fox Sports North reversed course fast enough to make it appear that way.  Instead, the “Winners Circle” is a apparently a complimentary addition, not substitution, that is FSN’s way of expanding the Circle Me Bert concept to a broader audience, to include fans watching the game at home, likely through social media.  As Michael Rand of the Star Tribune writes, perhaps the move by Fox Sports North was related to a reduced role for Blyleven on the air.  His contract for 2017 and 2018 is for just under half the games, down form essentially every game a decade ago.  The new name would allow FSN to promote the Minnesota Lottery without Blyleven.

Regardless, the good news for Blyleven is that with “Circle Me Bert” continuing for the forseeable future, he’ll likely be able to sling some additional merch and keep his Circle R or ®  for CIRCLE ME BERT, the mark he smartly registered more than ten years ago, and has since renewed, for clothing and toys, like this Circle Me Bert bobblehead and t-shirt.

The same cannot be said for one of the other pieces of this story.  Did you notice no ® attaches to the word “telestrator” used above?  That’s because ESPN cancelled the mark TELESTRATOR, registered in connection with “apparatus for generating video images which can be superimposed over background video images,” through a simple default judgment at the Trademark Trial and Appeal Board, back in 2001.

With no valid registration now for almost 20 years, no ®, and widespread, long-term use of the the word without pointing to a single source, it seems like an easy call – strikes one, two, and three – the telestrator is OUT, having become genericized, and sent to the bench with other former trademarks like “escalator“.

 

 

 

 

 

 

 

With the growing popularity of e-sports (multiplayer video-game sports competitions, often played by professional gamers for spectators–also stylized “eSports”), I’ve seen an increasing number of trademark disputes not only between video-game companies, but also between video-game companies and other non-electronics businesses selling physical goods or services.  It is interesting to observe the arguments regarding bridging the “virtual gap” between the physical world and the digitized world, in terms of whether consumers would actually perceive relatedness and confusion.

One example, and a timely update to one of my recent posts, was the potential dispute between Major League Baseball Properties, Inc. (“MLB”) and Blizzard Entertainment, regarding Blizzard’s Overwatch game. The logo used for the Overwatch game had a two-tone background with a silhouette of a figure, arguable with some similarities to MLB’s well-known blue-and-white logo with a white silhouette of a baseball player. As predicted, after filing a request for extension of time to oppose, MLB never followed through with an opposition proceeding. And it seems that MLB didn’t convince Blizzard to make any changes, as the Overwatch League mark appears the same–so a positive outcome for Overwatch there. It seems MLB wasn’t concerned enough about potential confusion in light of the gap between the parties’ goods and services; although, in my view, the lack of concern was probably influenced by the significant dissimilarities in the marks.

Another example recently in the news is a new enforcement action by Adidas (or as their marketing folks prefer, adidas). adidas is often in the news regarding its aggressive enforcement measures, as we’ve blogged about on numerous occasions (such as here, here, here, and here).

This one is interesting as, unlike many examples we’ve blogged about, the enforcement target is not another shoe or clothing company, using a physical similar design with three (or two, or four) stripes. Rather, the target here is the Turner ELEAGUE, which offers popular e-sports competitions.

The ELEAGUE design logo includes an “E” design consisting of three lines, that (arguably) appears similar to the adidas three-stripe design. Turner has applied to register its mark in connection with various types of digital media and software in the field of electronic sports (Application No. 87065837), as well as various types of marketing promotion services, retail store services featuring “clothing,” and “clothing for use in online virtual worlds” (Application No. 87065846). See the “E” design mark below applied-for by Turner, as well as the mark next to the word “LEAGUE” as it typically appears on Turner’s website.

A couple weeks ago, adidas filed an extensive Notice of Opposition (over 100 pages) against registration of Turner’s applications.  The primary goods offered by adidas, and identified in its trademark registrations, are clothing, apparel, footwear, and physical sporting goods. Nevertheless, as argued in the Notice of Opposition, adidas also licenses its mark to be used in video games (e.g., on virtual players’ clothing, and in virtual signs and sports fields), and sponsors electronic sporting events and teams, all of which is helpful for the relatedness argument.  In addition, to the extent that Turner’s ELEAGUE application seems to also cover real-world “clothing,” rather than only  “virtual” clothing, adidas has a stronger case for relatedness. In industry news there have been some skeptical reactions to the dispute, but to be fair, the Notice of Opposition makes some decent relatedness arguments, so we’ll see how this one turns out. No reaction yet from Turner, as the Answer to the Notice of Opposition is not due until November 19.  I’ll be watching this one with interest–stay tuned for updates.