Posted: November 3rd, 2011
By Joseph Norman *
Alright, who forgot to lock the equipment shed? Apparently, the intellectual property lawyers at Major League Baseball (MLB) and the 2010 World Series Champions San Francisco Giants. It seems that while the Giants have been using their cursive script logo since 1993, nobody thought to trademark it. Well, an entrepreneurial clothing maker from close-by Hayward, California did. On March 15, 2011, Gogo Sports, Inc. registered a mark “virtually identical” to the Giants’ cursive logo in the United States Patent and Trademark Office Supplemental Register. All is not lost for the Giants, however, as it is likely they can establish a prior use claim to the trademark.
In April 2011, the Giants finally wised up to their failure to register the mark. On April 26, the Giants submitted a Trademark Application to the USPTO for a mark consisting of the words “San Francisco in stylized text.” Complaint at 37, Exhibit K, Gogo Sports, Inc., v. Major League Baseball and The San Francisco Giants Baseball Club, (C.D. Cal. 2011)( No. 11 Civ. 7992JHNTJEM) (hereinafter “Complaint”). On August 8, the Giants’ application was refused “because of a likelihood of confusion with the mark in U.S. Registration No. 3933119.” Id. It is not clear whether they were aware of Gogo’s mark, but the Giants did not seek to assert any right against Gogo until September. Complaint at 4.
On September 7, MLB counsel Nicholas Eisenman sent Gogo a cease and desist letter demanding immediate and express abandonment of Gogo’s registration of the mark. Complaint at 4. Clearly by that time MLB recognized its error and realized that it had neglected to register the mark and that Gogo had successfully registered its mark. Gogo’s counsel responded on September 13, with a request for MLB to identify its trademark registration with the Patent and Trademark Office. MLB answered two days later with an explanation of its stance and a reiteration of its demands. Complaint at 5. On September 21, Gogo responded again by requesting MLB’s trademark registration, to which MLB answered on the same day with a vague response as to the merits of their claims and a stern request for settlement discussions. Complaint at 6. Following the perfunctory cease and desist letters, Gogo filed suit in Federal District Court for the Central District of California seeking declaratory judgments validating its right to the registered trademark.
Although it might seem that the Giants are behind in the count, legally they are in a pretty good spot due to the prior use defense provided in the Lanham Act. 15 U.S.C. § 1115(b)(5) (2006). Section 1115(b)(5) essentially provides that a trademark infringer may contest the trademark registration by showing that: i) his use was without knowledge of the registrant’s use; and ii) he has continuously used the mark from a date prior to registration of the mark. Id. Ninth Circuit courts have long recognized this defense to trademark infringement. See Mister Donut of America, Inc. v. Mr. Donut, Inc., 418 F.2d 838 (9th Cir. Cal. 1969). In essence, the Giants need only show they have been using the logo prior to Gogo’s use to defeat Gogo’s enforcement of the mark. The Giants claim they started using the logo in 1993. Complaint at 19, Exhibit D. If that is the case, then it is a safe bet that they will be able to successfully challenge Gogo’s trademark. Although Google image searches for the cursive logoed jerseys only return one hit. Raising the question of what threshold the use must reach before it will be recognized. Despite their advantageous legal position, San Francisco and MLB could have saved themselves from this hassle by covering their logo bases.
Finally, it is easy to point out the Giants’ and MLB’s failure here, but uniforms and logos these days are increasing exponentially. MLB teams can wear ten or more different uniform styles—each with different color schemes and logos—during a single season. These include a home uniform, a road uniform, an alternate uniform, multiple throwback uniforms, batting practice uniforms, spring training uniforms, and uniforms for special occasions. With an ever-increasing number of logos in use, it is not surprising that one fell through the cracks. That being said, it is highly likely that professional sports teams across the country are double-checking their trademarks.
* Joseph Norman is a third-year law student at Wake Forest University School of Law. He holds a Bachelor of Science in Management from North Carolina State University and an MBA in Finance from the McColl School of Business at Queens University of Charlotte. Prior to enrolling in law school, Mr. Norman worked for Wells Fargo Wealth Management in Equity Research. Upon graduation in May 2012, Mr. Norman will practice corporate law.