As we move into Week 2 of the NFL, the big clash in North Country is Sunday’s Green Bay Packers – Minnesota Vikings game. All the buzz is whether the second-coming-of-Favre Aaron Rodgers will prevail over the vaunted Vikings defense. But here in my trademark bubble, I’m more interested in the Jacksonville Jaguars versus former Jaguar player Dan Skuta. This isn’t a contract negotiation battle, but instead a dispute over who owns the claimed trademark rights in the word SACKSONVILLE. The dispute is now the subject of a pending opposition at the Trademark Trial and Appeal Board.

In the Notice of Opposition to the team’s application, Skuta claims to have been the first to coin the term “Sacksonville,” back in July of 2015, but his pending application was refused based on a possible likelihood of confusion with the team’s already filed application. He created a Twitter account and hired a graphic designer to create the logo below, which appears on Skuta’s website.

 

In the team’s application to register the claimed #SACKSONVILLE mark, the Jaguars claim a first use date of September 1, 2017.  However, the team has the ability to present evidence of use earlier than the date of first use listed in the application. One article notes that the team has used the phrase as a social media hash tag at least as early as 2013. But in most circumstances, merely using a word as a social media hashtag does not constitute use in commerce.

Unsurprisingly, one local Jacksonville news outlet is skeptical, siding with the team over a “forgettable linebacker . . . who may have been better at anticipating trademark uses than he was at reading offenses.”

It is possible that Skuta may have used the mark in commerce before the team. Skuta hasn’t made his case any easier by including in the logo what appears to be a jaguar skull and the same Jacksonville Jaguar teal color. On top of this, the play on words with “Jacksonville” potentially creates association with the team, too.

It’s a bit of a mess: are there even any trademark rights and, if so, who owns them? It seems the team likely should be the owner, but perhaps they fumbled the rights along the way. We may have to wait for the Trademark Trial and Appeal Board to weight in to see who emerges from the scrum with the ball.

Passing by a roadside billboard recently (below is a miniature version I found in the Minneapolis skyway system), my first thought was, wow, McDonald’s is getting into the juicy lucy business:

Until more focus revealed that State Farm Insurance is the one behind the ad. Look familiar?

No doubt burgers and car insurance are totally different lines of business and seemingly unrelated for any likelihood of confusion analysis, but is State Farm so confident that there is no protectable McDonald’s trade dress here (virtually identical red background color, burger positioned on left portion of ad, and white all lower case letters in copy to the right portion of the ad), and is it so confident that any claimed trade dress is not famous for dilution purposes? Is it even possible that McDonald’s was not contemplated as a possible risk during the preparation of these ads?

A more basic question might be, what on earth is State Farm doing trying to sell car insurance by plastering larger than life size juicy lucy burgers on billboard signs? I’d love to have been a fly on the wall during these brainstorm sessions. I really don’t get it, and I’m doubting Mark Prus will either. Do you suppose the agents who try to sell State Farm health insurance products had any say in these gastrically-stimulated ads? I’ve been loyal to State Farm as customer since I could drive and I didn’t know (until writing this post) that State Farm offers health insurance products.

So, putting aside the notion of a potential trade dress claim, what I’m left wondering is whether McDonald’s thinks State Farm is acting “like a good neighbor” on this one? In other words, would State Farm think McDonald’s is acting like a good neighbor if McDonald’s started offering a “discount double check” burger? Maybe Aaron Rodgers could flip them and help sell them?

What do you think, does McDonald’s have a viable trade dress claim? And, is State Farm acting like a good (trademark) neighbor here?