Congratulations to Stanford University’s Women’s Volleyball Team, winning the NCAA DI National Championship this past weekend in Minneapolis’ Target Center, defeating Nebraska in Set 5:

The competition was incredible, a real seesaw battle, Stanford winning Set 1 (28-26), Nebraska Set 2 (25-22), Stanford Set 3 (25-16), Nebraska Set 4 (25-15), setting up the Set 5 tiebreaker.

Even from our elevated vantage point, it was a challenge to ignore Stanford’s wild band, erratic cheerleaders, and bizarre dancing tree, during the many breaks in the action.

The Stanford Tree, not in the University’s official logo and seal, instead the spastic and gyrating Tree mascot, is simply “a member of the band” — as the University has no “official” mascot.

 

As the Sets progressed, an interesting pattern emerged, but not related to the random, spontaneous, and irrreverent motions and defiant gestures of the merry band of cheerleaders and Tree mascot. Any choreography appeared impossible to script.

No, the pattern I noticed was that each of the first 4 Sets was won by the team that had its back to the band, in other words, turned 180 degrees away from the Stanford Tree.

 

 

In contrast, the losers through Set 4, always faced the Tree, in defeat, coincidence, I think not.

The teams switched sides at the close of each Set. During Set 5, with its back to the Tree, Stanford was up 8-7 at the half, then switched sides again to face the Tree, but somehow was able prevail, in the end, while facing the Tree, winning the 5th and final Set: 15-12.

So, with all this turning away from the Tree mascot, positioning the team to win a National Championship on the one hand, and disavowing the Tree mascot on the other hand, specifically rejecting it as not the University’s mascot, I’m left wondering, who owns it?

In other words, clearly there is intellectual property wrapped up in the Tree mascot costume, I’m seeing both trademark and copyright at work here, but really, who owns it?

Put yet another way, who should Reese’s call for a co-branding opportunity to have the Tree mascot appear on packaging for these little gems, or perhaps, the gems themselves?

Can the University automatically own the intellectual property in an “unofficial” mascot? What are the legal distinctions, if any, between official and unofficial mascots?

For what it’s worth, disavowing the Tree, and its unofficial status, apparently hasn’t prevented the University’s payment of NCAA fines against Stanford when the Tree is especially unruly.

At Stanford, it appears that the student selected by the band to perform as the Tree for the academic year, wears the costume created by his or her predecessor from the previous year.

As to copyright, do you suppose there is a work for hire arrangement in place? So, who would you call to license the IP associated with the Tree? Here is a list of the apparent creators.

You’re well aware of the fact that we have a burning desire for great brands and trademarks.

Outside Whole Foods last evening, with snow falling, I found a beautiful display of firewood:

A smile came to my face as I read the SnuggleWood brand name for this kiln-dried firewood.

We’ve written a lot about the many legal benefits of suggestive over descriptive trademarks.

I’m fortunate to have enjoyed many evenings snuggling with loved ones around a blazing fire.

Later, it also brought warm and toasty feelings to see a federal trademark registration exists:


Sadly though, the fire was doused after learning that an earlier, broader trademark registration for the single word SNUGGLEWOOD lapsed, extinguishing more than 15 years of nationwide priority.

Apparently ownership changed between the original 1998 filing and a decade later when renewal evidence was due, so the USPTO rejected the evidence, as no clear chain of title was provided.

It’s sad to see because trademark ownership and chain of title issues are preventable and fixable.

Let’s hope for the SnuggleWood brand that it is never burned by unregistered trademark rights that could have developed in remote geographic parts of the country before the new filing in 2014.

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.

Well, it was fun while it lasted. Some incredible moments last longer than others, and when the stars are all lined up, they can even translate into a movement. Yet, the blistering loss in Philly proved that our hope of being more than a host for Super Bowl LII, wasn’t meant to be.

Minnesota was seriously buzzing for the past week, following the incredible final-second touchdown score by Stefon Diggs, to launch the Vikings past the Saints, sending them to Philly to be favored as the likely NFC champion for Super Bowl LII. No more Dilly Dilly, Vikes couldn’t Bring it Home.

Sadly for the Minnesota Vikings and their fans across the country, the meaning of the Minnesota Miracle and Minneapolis Miracle phrases have been relegated to a brief moment in history — memorable no doubt, but memorable and meaningful for much less than most hoped for here.

Trademark filings reveal that the Minnesota Vikings hoped for more too, and likely hoped to cash in more too, within twenty-four hours of the infamous catch, the team sought to turn the meaning of Minnesota Miracle and Minneapolis Miracle into exclusive and proprietary trademark rights.

Team ownership filed a few used-based applications (here and here) and a pair of intent-to-use trademark and service mark applications (here and here) covering virtually every good/service known to men, women, and children, including the proverbial kitchen sink. Are you wondering how many of those items could withstand a challenge on the requisite bona fide intent? Let’s say I am.

It remains to be seen whether the USPTO will issue the increasingly common failure to function and informational refusals against the use-based applications.

It also remains to be seen whether the buzz around the Vikings several trademark applications concerning those phrases will last longer than our week of euphoria.

Perhaps even most interestingly, no one seems to be reporting about the apparent lack of alignment on who owns what surrounding the Minnesota Miracle and Minneapolis Miracle phrases, with quarterback Casey Keenum (a little slow on the draw) filing for both phrases as trademarks (two days after the Vikings did), and with Stefon Diggs apparently selling his own shirts, here:

There are many things that serious trademark owners do throughout the lifecycle of a trademark to mitigate risk, protect the valuable goodwill in their underlying brand, and preserve their valuable investment in this important intellectual property asset. Here is a fairly extensive, but certainly not exhaustive, and often forgotten, list of those things:

  1. Clear new marks before using them even if “only” for brand extensions;
  2. Understand the pros and cons of different name styles;
  3. Adopt suggestive marks over merely descriptive ones;
  4. Self-police marketing materials to keep marks suggestive and non-functional;
  5. Steer clear from the D-word;
  6. Appreciate the pros and cons of non-verbal wordless logos;
  7. Strive to own logos that can truly stand alone without words;
  8. Spend time developing an acceptable generic name too when launching new brand;
  9. Develop non-traditional trademarks;
  10. Recognize the power of federal trademark registration;
  11. Know when concurrent trademark registration makes sense;
  12. Appreciate the paradox of brand protection;
  13. Attend to brand strength and understand the importance of trademark enforcement;
  14. Educate themselves about trademark likelihood of confusion issues;
  15. Prefer their own creativity over borrowing the creativity of others;
  16. Question how realistic the risk of trademark genericide is for them;
  17. When realistic, they take concrete steps to avoid the perils of trademark genericide;
  18. Develop plans to avoid trademark abandonment;
  19. Avoid bona fide allegations and findings of trademark fraud, trademark bullying and reverse domain name hijacking;
  20. Know what a touchmark is;
  21. When appropriate, they pick up the phone before writing a demand letter;
  22. Follow Seth Godin’s marketing advice, but avoid his trademark advice;
  23. Manage the legal risks of verbing trademarks and brands;
  24. Appreciate the limits of the nominative trademark fair use defense;
  25. Steer clear of Dr. No on the Parade of Horribles;
  26. Hire trademark counsel prepared and expected to take a position; and
  27. Of course, read DuetsBlog every day and note the milestones along the way.

Now, this is not to say that trademark owners who don’t do each of these things is comedic or not to be taken seriously, but many at least consider or should consider doing these things.

Band names are big merchandising business, including t-shirts, hats, posters and other paraphernalia.  When checking the United States Patent and Trademark Office (“USPTO”) website for other band trademarks, I was not surprised that the lead singer and savvy businessperson Jon Bon Jovi (a.k.a. John Bongiovi) owns the Bon Jovi® trademark himself. Eighties band REO Speedwagon set up a company to own the trademark for the band’s name.

The Black Sabbath trademark was at the heart of a legal dispute that just recently settled. Specifically, former front man Ozzy Osbourne had sued Black Sabbath member Anthony (“Tommy”) Iommi for falsely taking ownership of the Black Sabbath trademark when he filed an application with the USPTO.  Ozzy contended that he was “synonymous with Black Sabbath.”  In addition, he and his wife, Sharon, had managed the licensing of the Black Sabbath name since 1997—without assistance from Mr. Iommi. Ozzy did not seek sole ownership of the trademark. Rather, Ozzy sought to have a New York court declare that he, Iommi, and two other band mates Geezer Butler and Bill Ward were co-owners of the rocking trademark. In the lawsuit, he also sought to recover a split of the royalties and lucrative proceeds from the sale of merchandise while he was not rocking with the band. 

Mr. Iommi defended the lawsuit by arguing that Ozzy had assigned away his rights to the name when he left the group in 1980 in exchange for a payment. Ozzy disagreed and alleged that the agreement was invalid because "it does not expressly transfer the goodwill symbolized by the Black Sabbath mark" and that agreements the parties signed from 1997 onward to share royalties from licensing the name "clearly evidence[d] . . . an intention to extinguish the 1980 agreement."   

Rock bands, as well as other collaborative groups, must carefully address trademark ownership—especially where there is a departure from the band and/or one band member is doing most of the licensing and branding work. On the bright side, Ozzy and Mr. Iommi were able to “amicably resolve” their issues. Rolling Stone reports that the two may even work or co-operate together in the future. If there are any additional trademarks involved in this co-operation, Ozzy and Mr. Iommi need to be sure to clearly address these issues in a new written agreement.

(h/t to Mark Malek of Tactical IP for the heads up)