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.

Most people likely know that the Los Angeles Angels are a baseball team. But did you know they are also a blood bank? Me neither! But according to a filing with the U.S. Patent and Trademark Office (USPTO), it appears that the Angels are, or at least claim to be.

At issue are two pending applications to register the marks ANGELS FOR LIFE and PLATELET DONORS ARE ANGELS FOR LIFE, both for use in connection with “promoting the donation of blood by means of arranging and conducting incentive reward programs” in Class 35 and “blood donation services, namely, blood bank services” in Class 44.

The Angels have opposed both applications, relying on a number of registrations for printed materials, bags, clothing, and entertainment services. Interestingly, the Angels also claimed prior common law rights in connection with “blood donation services” and “promoting the donation of blood.” It turns out that the Angels have allowed local hospitals and related medical entities to conduct blood drives at the stadium, along with offering prizes for donating blood.

The issue brings up an interesting question of what level of use is required in order to develop common law rights. Is the fact that it occurs at the Angels stadium sufficient? Does the fact that UC Irvine Healthcare ran the clinic mean that the public would have associated the blood donation services with UC Irvine Healthcare, rather than the Angels?

If this use is sufficient to establish rights in connection with blood donation services, what else can the Angels claim? Restaurant services are obvious, I mean, they do sell hot dogs. I’m sure there is a first aid kid somewhere, too, so medical clinic services sound alright. Transportation services, check. Security services? Sure. Do ATMs and providing change at registers count as banking or financial services? Sure, why not.

All of this begs the question, why do the Angels care?  If the applicant had also applied for use of the ANGELS FOR LIFE mark in connection with clothing, I’d understand. There could be some potential for confusion as to endorsement or affiliation with that use.

Given that the Angels are going after blood donation services, one would expect that they have an even more aggressive approach to marks that are registered for goods that coincide with their federal registrations, like clothing. However a quick search of the register reveals a number of live marks incorporating the term ANGELS in connection with clothing, including US ANGELS & Design, ANGELS ARE EVERYWHERE, ANGELO ANGELS, ANGELS AT WORK, ANGELS SO SWEET, TREY’S ANGELS, SUNANGELS & Design, and many more.

I’m not sure how the Angels can ignore all of these other marks that are arguably more similar in commercial impression for use in connection with more related goods. Perhaps the club has determined that the term ANGELS is diluted for clothing but wants to prevent this from occurring with other goods or services. Yet if such minor variations are sufficient to avoid a likelihood of confusion for identical goods, how can similar variations not be sufficient for promoting blood donation services? Especially for the PLATELET DONORS ARE ANGELS FOR LIFE mark.

Most attorneys would agree that an enforcement program is key to protecting a client’s marks. However it isn’t sufficient to merely send out demand letters once a month or oppose an application occasionally. In order to be truly effective, an enforcement program requires substantial planning. You need to be aware of the extent of your client’s trademark rights and any limitations based on third-party uses. Once you have that knowledge, you can create an enforcement strategy to protect your client’s current rights, identify the buffer zone that you need to defend to prevent your client’s rights from shrinking, and also identify potential areas of expansion based on your client’s business plans. If a particular area (identical marks or closely related goods/services) isn’t worth defending consistently, it isn’t worth defending at all. And even big businesses don’t like to waste money. That’s money that the Angels could be spending on trying to buy a world series the services of a highly sought-after free agent!

For the sake of full disclosure, I guess I should admit that I still haven’t gotten over the Angels defeating the Twins in the 2002 American League Championship Series. I wasn’t particularly happy when they signed Torii Hunter, either. I guess it’s just an old fashioned blood feud…

There was some news yesterday that Will.I.am of the Black Eyed Peas “sued” Pharrell Williams, one of my favorite producers and member of N.E.R.D. and The Neptunes, over the I AM OTHER brand.   If you have never heard of N.E.R.D. and are looking for some new music, seriously check out  N.E.R.D.’s first album – “In Search Of….”

I Am Other Entertainment, founded by Pharrell, applied for the mark I AM OTHER with respect to various goods and services.  Will.I.am owns several registrations for the mark WILL.I.AM,  has a registration for I AM for apparel, and has applied for the mark I AM in connection with other goods and services.  The last time I saw Will.I.am and Pharrell go head-to-head was when the Black Eyed Peas open for N.E.R.D. at The Rave in Milwaukee in 2004 (Pharrell 1, Will.I.am 0).

Entertainment news reports of trademark or copyright issues often present a lot of misinformation about the law.  One major music magazine claimed that Pharrell was being sued regarding his new brand name by Will.I.am for a “copyright” claim, which I suppose Will.I.Am correctly denied. Another article stated that Will.I.am was not suing Pharrell and that Will.I.am’s lawyers dismissed claims of a dispute but that it was an easily resolved trademark dispute.  How calling it a trademark dispute dismisses claims of a dispute is interesting.   Will.I.am himself has denied suing Pharrell on Twitter:


The truth, as usual, lies somewhere in between.  Even if he does not want to admit it on Twitter, Will.I.am has opposed the registration of I Am Other Entertainment’s trademarks.   Opposing registration is procedurally akin to a lawsuit, with the desire to stop the other party from registering (and using) their applied-for mark.  There is a complaint (called a “notice of opposition”), an answer, discovery, trial testimony and ultimately a decision as to whether the mark will register or be administratively abandoned.  The major difference is that an opposition proceeding occurs within the Trademark Office at the Trademark Trial and Appeal Board, while litigation usually occurs in court.

Will.I.am may not be a party to a lawsuit, he certainly can tweet #iamopposer.  We’ll see if he’ll be able to tweet #iamwinner when this comes to a conclusion.

Will.I.am does own a registration for I AM with respect to apparel, a mark which is wholly incorporated into  Pharrell’s I AM OTHER trademark, which Pharrell has applied for with respect to apparel.  But there are many registered marks that incorporate I AM for use with apparel that could be problematic for Will.I.am, including the recently registered I AM. & Design mark.  As for WILL.I.AM versus I AM OTHER, it will be tougher for Will.I.am to convince the Trademark Office there is a likelihood of confusion in the marks which differ in sight, sound and meaning.   Hopefully, with the attention given to this, the two can reach an amicable agreement.

If not, maybe next they can start another “non-dispute” over each other’s hand gestures