– 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!

If you’re a video game fan like me, you’re probably familiar with Blizzard Entertainment and their assortment of popular games, such as Starcraft, Diablo, and World of Warcraft. One of Blizzard’s newest games is Overwatch, a multi-player, first-person shooter game. One aspect of this game is the Overwatch League, a series of tournaments and live events involving Overwatch players around the world, eventually culminating in the Overwatch League World Championships.

Blizzard recently applied to register an Overwatch League design mark, shown below, for various goods and services, including entertainment services in the nature of organizing and conducting eSports and video game contests and video game tournaments.

Major League Baseball Properties, Inc. (I’ll abbreviate as “MLB”) decided to file a request for an extension of time to oppose Blizzard’s application, presumably based on their various Major League Baseball design marks, such as the one below.

Significant press coverage has followed this development, which is somewhat unusual, as this is merely an extension request, i.e., it simply buys MLB more time to consider whether to file a Notice of Opposition and/or to reach out to the applicant to attempt to resolve a dispute informally. Filing extensions of time to oppose are relatively routine in the trademark field. Often times, in borderline cases where a party might not necessarily follow through with an opposition proceeding, simply filing an extension of time to oppose slows down the prosecution of an application and provides extended leverage during informal negotiations between parties.

So this extension of time might not lead to any formal dispute. One might question how likely it is that MLB would really follow through with an opposition here based on the differences in the marks. Both marks have a two-tone background (though in different colors), split diagonally by a white silhouette of a figure. However, the figures are quite different, one being a baseball player about to hit a ball, the other being a figure leaping forward with some type of gun, apparently about to shoot someone (the species of the Overwatch figure is also unclear–Overwatch has a variety human and non-human characters, such as a genetically engineered gorilla).

On a quick search, I’ve come across several design marks with two-tone, diagonal color splits, and white figures in the middle, some of which are in related sporting or entertainment fields. As one obvious example, see the NBA’s well-known logo:

As another example in the video-game field, see the MLG (Major League Gaming) design mark:

I wonder whether the Overwatch League design will end up being of any significant concern to MLB. Perhaps the extension of time to oppose simply provides some leverage over informal talks between the parties towards modifying the Overwatch League design? What do you think?

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.

The Cleveland Indian’s loss last evening in the World Series ensures that Chief Wahoo will not end the 2016 MLB season at Chicago’s Wrigley Field, but instead Cleveland’s Progressive Field:

WahooLogo

I’ve written before about how the Wahoo logo is the non-verbal equivalent of a racial slur and about the severe irony in Wahoo’s grotesque racist Native American caricature and mascot having his home in a place called Progressive Field.

More than seven years ago, it appeared that Cleveland was moving away from placing the Wahoo logo front and center, but that turned out to be wishful thinking, instead the continued use and attention has spawned fans to dress up in red face as Wahoo disciples.

It is actually a sad state of affairs for all of us, including those of us who love baseball, that Cleveland did not have the wisdom to retire a racist logo long ago. Where has the MLB leadership been on this issue? How about Cleveland’s main sponsor, Progressive Insurance?

The New York Times writes today about the offensive Wahoo logo: “A slur is a slur, and it needs to be retired.” Hat tip to James, thank you.

What will it take for Progressive Insurance to say, enough is enough, we don’t want Flo and our Progressive brand reputation to be wrapped up together with such racist imagery?

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.

Time spent with my boys in Omaha at the College World Series is hard to beat. Although, last year, Father’s Day weekend was hard to beat too. And, the archives indicate five years ago was pretty wonderful as well. Basically, it’s all good.

On this particular road trip, we were fortunate to score tickets to the Thursday night game between TCU and LSU, a great game. We also scored better and even cheaper tickets right behind the Florida Gators’ dugout for their last two games against Virginia, unfortunately for the Gators they fell to the Cavaliers on Saturday night, in a very close game, 5-4.

One of the benefits of our close vantage point behind the dugout was to see the players’ methodical preparation before heading to the plate for each at bat. I’ll have to admit, it was hard not to wear my trademark helmet from this vantage point. Besides the different and unique, but consistent and repetitive metaphorical trademark style of each batter, there was a very visually striking and unique bat weight being used by some of the Gators batters that caught my eye.

Convinced the brand name on the bat weight appeared to be YARD, I thought to myself “what a great suggestive mark,” but to my dismay, between-inning research on my iPhone revealed the brand to be VARO, not YARD:

VaroBatWeight

Given the stylization of the VARO brand name, can you offer me at least a modicum of sympathy in mistaking VARO for YARD? Clearly my vision would never qualify me to be an umpire, and when typed, I fully admit these are clearly distinguishable words, but can you agree that from a little distance the thick all cap V could be mistaken for a Y and the chunky O could look a lot like a D?

One mental clue that may have lead my eyes down the Y and D path, instead of the V and O path, is that VARO means nothing to me (turns out it too is a great suggestive name, a foreign term translating to LAUNCH — something every batter would like to do to the baseball). The other more persuasive mental clue leading my eyes to read YARD — without thinking too hard — is the well-known slang phrase GOING YARD meaning to hit a home run. The context of baseball certainly helped my eyes see YARD, not VARO.

Seemed like a great trademark story to write about when it was just about YARD, but after digging a little deeper and discovering the VARO connection, I’m thinking this post went from a single or double to going yard itself. But, I won’t ask if you agree.

At least for me, one of the takeaways is the need to take the chosen stylization into account when searching word marks — we’ve talked about this before. Although I haven’t been able to locate any problematic YARD hits on the USPTO website, without considering stylization and the word’s visual impression, I’m doubting that any hits for YARD would have resulted during VARO trademark searches and due diligence.

Another takeaway to ponder is what might be a reasonable scope of rights surrounding the particular trademark stylization used? In other words, could trademark rights in the VARO stylization shown above extend to prevent another’s use of YARD on competitive products?

If so, what is the likely success with a switch-hitter hypothetical and scenario? That is, what if the original brand was, in fact, YARD, and the newcomer in direct competition launched VARO as the competing brand with the above script, same result?

On another personal branding note, when he’s able, perhaps Gator lead off hitter and left-fielder Harrison Bader would be a perfect spokesman for the VARO brand, going YARD twice at the 2015 CWS, no doubt thanks to his warmup swings with the VARO Arc batting weight:

Harrison Bader Single in the top of the 9th
Harrison Bader Single Top of 9th in Game 13 of CWS Against Virginia
Harrison Bader Single Top of 7th in Game 13 of CWS Against Virginia
Harrison Bader Single Top of 7th in Game 13 of CWS Against Virginia

Yes, it has finally arrived: the end of December. Whether you’re someone who views the day as bitter sweet, dreading the day when the dirty looks from your neighbors force you to finally take down your decorations in February, or whether you were ready for it all to be the over the very moment you noticed the lights, stockings, and holiday candy hit the shelves in your local Target or Wal-Mart on October 30th, the season is filled with memories, symbols, and personal meaning and connections.

While others may focus on a more broad meaning of Christmas (the spirit of giving, or the joy of receiving), a recent Opposition Proceeding based on a logo for the letter “C” left me wondering, what does the first letter of the Christmas mean to me, and to the public in general?

For some, particularly in the upper Midwest, the letter “C” is not likely to trigger anything other than COLD (with a wind chill of -15 as I post this). For others, it may be difficult to think of the Coming Credit Card bill in January.

Okay, maybe I’m being too Coy.  I’ll try to focus this a little bit, when you think of a Company’s logo, with the letter C, what do you think of? Okay, I’ll Cede some ground, we Could work with a more Concise Category, how about Clothing? Any of the below Create a Connection in your Cranium?

Concede? Chanel, Coach, and Chaps (e.g. Ralph Lauren). Okay, clothing may be too broad. The Case I’m Considering is a recent Opposition filed by the Chicago Cubs against Clear Channel for a C and Design mark, both shown below:

Clear Channel on the left and Chicago Cubs on the right.

Clearly, Clothing isn’t sufficiently Confined. To Correctly Consider the Closeness of these “C” marks, how about we look at marks registered for baseball Caps or athletic goods?

Hm. Well Certainly any marks registered for Collegiate programs, like those below, must be ignored, even if they are registered and used in Connection with baseball Caps, Competitions and Exhibitions:

Consistent with this Conclusion, there Couldn’t be any Confusion with the Collection of marks below, registered for professional sports teams. After all, they’re either different professional sports, or at least in the Case of the Cincinnati Reds and Cleveland Indians, different Cities!

Consequently, I must Concede that the Chicago Cubs have Convinced me that the letter (and Consonant) C is uniquely associated with the Chicago Cubs. Certainly Consumers will not understand the C logo as referencing the City of Chicago or their Chosen Club Team, the Cubs.

Although I admit, I am not quite sure how to deal with this mark:

The registration is owned by the Chicago Athletic Association Corp. for use in connection with “services rendered to encourage all manly sports. . . . ,” with a claimed first use date of March 1890.

Come to think of it, I’m starting to wonder if maybe the Copyright Office might have a Claim against all of these parties discussed above…

In all serious, perhaps the Chicago Cubs do have a legitimate Claim. In fact, I hope they win. After all, they really could use one. Even though my Twin Cities Minnesota Twins have had a couple of bad years, we did win two World Series titles in the modern era. If you can’t win on the field, you might as well win in the Courtroom…

In Conclusion, wherever you are, and whichever your team, may your holidays be filled with friends and family, and laughter and joy. Merry Christmas!

As some of you may have noticed, one my esteemed colleagues, Jonathan Applebaum, recently wrote an entertaining and informative post regarding Major League Baseball Player Bryce Harper’s efforts to trademark the phrase, “That’s a clown question, bro.”  This was just the most recent example of so called catch phrase trademarks where people have tried to harness the publicity of clever or witty public commentary in an effort to sell merchandise.  Examples abound, particularly in sports.  In addition to the recent Bryce Harper example, we also have Bart Scott’s relatively well-known, “Can’t wait.”  Scott made this statement after the Jets beat the Patriots in the NFL Playoffs.

So riddle me this.  Are catch phrases such as the two identified above the proper subject of trademark protection, or are catch phrase trademarks unwarranted monopolies on statements and comments in the public domain?  Consider this.  The purpose of trademark law is generally to aid the consumer in differentiating among competing products and to protect the producer’s investment in its brand reputation:

“[T]rademark law, by preventing others from copying a source-identifying mark, ‘reduce[s] the customer’s cost’s of shopping and making purchasing decisions,’ for it quickly and easily assures a potential customer that the item — the item with this mark — is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product.” Qualitex Co. v. Jacobson Products Co, 514 U.S. 159 (1995).

If I want to buy a t-shirt, coffee mug, or bumper sticker with the phrase “That’s a clown question, bro” on it, I don’t want them because I believe they came from a single source or the same producer.  I want them simply because they have the phrase on them.  The phrase itself is the basis for the demand.  In trademark parlance, I believe the catch phrase itself should be characterized as “aesthetically functional” and therefore ineligible for trademark protection.

I think Bart Scott’s own comments about his catch phrase illustrate my point.

Once I started to hear people were trying to make T-shirts, I said, ‘I tell you what, if anybody is going to benefit off ‘Can’t Wait’, it should be me.’

Trademark law is not about providing a benefit to those who first turn a clever phrase, its about protecting the information exchange between consumers and products regarding product quality and reputation. What do you think?