In December, you may recall, I blogged about Boise State’s federal registration of the color blue as applied to athletic field turf, known to many as Smurf Turf. At the time, I wondered out loud whether Boise State’s success in the U.S. Trademark Office might lead others to follow along this trademark path?

Hat tip again to

Mark Image

To sports fans of this university, December has been a big month because their beloved team finished the 2009 regular football season undefeated (13-0) once again, winning yet another post-season BCS bowl game bid. Next month will be even bigger news if their WAC team happens to defeat TCU in the Tostitos Fiesta Bowl. To trademark types, however, the biggest news of all is what this university was able to accomplish last month at the U.S. Patent and Trademark Office.

You might be surprised to learn (I was) that the above image is the drawing associated with the single color trademark ("the mark consists of the color blue used on the artificial turf in the stadium") that this university was able to federally register in connection with: "Entertainment services, namely, the presentation of intercollegiate sporting events and sports exhibitions rendered in a stadium, and through the media of radio and television broadcasts and the global communications network." Hat tip to Brad Frazer of the Hawley Troxell firm, in Boise, Idaho.

Quick question, how does one render entertainment services in connection with a single-color trademark through the "media of radio broadcasts"? Does oral reference to the blue turf on the radio constitute use of the mark in commerce?

In any event, the identity of the university in question, is revealed below the jump, and it is, of course:Continue Reading Surface Level Branding Runs Deep on This Athletic Field


Let’s talk turf today, two kinds. OK, maybe three.

First, with Target Field looking more and more like the long-anticipated brand new outdoor home ballpark for the Minnesota Twins, all Twins fans and the local media can think or talk about this week is the new real bluegrass blend turf being installed now (as I type this blog post, in fact, see live webcam here), as it was just transported from Graff’s Turf Farms in Fort Morgan, Colorado.

Second, most are looking forward to saying goodbye to the artificial turf of the 27-year old Hubert H. Humphrey Metrodome, and have been counting down the final days for some time.

Last, and most importantly for the purposes of this blog, let’s talk about the importance of legal turf.

Selecting the legal turf or forum where a trademark dispute or battle is fought in federal court is often a very strategic decision. Litigants not infrequently end up battling over where the dispute will be decided, long before even getting to the substance of their dispute. Certain aspects of the federal trademark laws are interpreted differently around the country, which can lead to what lawyers call “forum shopping,” basically, making forum selections based on where the plaintiff believes his or her case will most likely receive a favorable judgment. Indeed, most companies who file trademark lawsuits would prefer to file them close to home (unless forum shopping benefits dictate otherwise), in their own backyard, for that perceived home field advantage, and, because the out-of-state defendant typically ends up needing to hire two sets of lawyers to defend, their usual trademark counsel and local counsel too.

The general legal rule is that the first to file a trademark lawsuit is the one who gets to select the turf where the battle will be decided. There are exceptions to this general rule, perhaps we’ll explore those another time. For now, however, suffice it to say, being the first to file, often creates some helpful advantage or at least some leverage to bring the matter to a more favorable amicable resolution. The first-to-file plaintiff is able to make his or her settlement demand, with the comfort of knowing that — if it is not accepted — he or she already has secured the place for the dispute to go forward. If it happens to be a place where the defendant does not want to litigate, for one reason or another, this can facilitate perhaps better settlement terms for the first-to-file plaintiff.Continue Reading Securing the Desired Turf For A Trademark Battle