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da650

Ornamental Design vs Trademark

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Most sports leagues have active trademarks for teams that no longer exist. Looking at legal definitions including on uspto.gov all of these logos should be considered ornamental designs. There are no companies or brands with these logos or names. The specimens submitted to renew these are usually a t-shirt or hat with an old team logo on the front. It even specifically states on uspto.gov that a trademark would be refused for being ornamental in the case of "A logo on the front of a hat. The logo is associated with an organization, like a sports team, which did not manufacture the hat." To make this even less credible, you can usually see the tags for the actual company that made it in the picture.  How are these leagues allowed to acquire and continue to renew these trademarks?

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Just to clarify, is your inquiry limited to "teams that no longer exist" (e.g., the Dayton Triangles of the NFL), or are you also including teams that still exist but which have changed their names one or more times (e.g., the NHL's Hartford Whalers, which are now the Carolina Hurricanes, or the MLB's Washington Senators, which existed in three incarnations, one of which became defunct, but the other two of which are now known as the Minnesota Twins and the Texas Rangers)?

 

 

20 hours ago, da650 said:

How are these leagues allowed to acquire and continue to renew these trademarks?

 

Trademarks are acquired by use in commerce.  Trademarks do not get renewed.  What you're presumably talking about are trademark registrations, and the distinction is important.

 

As for your question, why the USPTO is renewing registrations for marks relating to sports "teams that no longer exists" is a subject that would require a fair amount of research to cover with any reasonable degree of thoroughness.  However, MLB sells a fair amount of Montreal Expos apparel, the NHL sells a ton of Hartford Whalers gear and even the occasional California Seals jersey.  As concerns those marks and others like them, it is perfectly reasonable for the registrations to be renewed.  There is an active registration for "Dayton Triangles," but the registrant is not the NFL.  Rather, it's some sort of local non-profit corporation, which has registered the mark (apparently without opposition from the NFL) for use in clothing.

 

What exactly is the purpose of your inquiry?  Are you seeking to challenge one or more registrations?  If so, you certainly can do that.  As you might be aware, the NFL is quite familiar with oppositions to and petitions to cancel trademark registrations (if you're not aware, I'm talking about the efforts to cancel the registration for "Washington Redskins").  Each mark would be looked at on a case-by-case basis.  Given the volume of Montreal Expos and Hartford Whalers gear that is sold, there's no legitimate basis to challenge those registrations.  As for others, maybe....

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Thank you, yes I am wondering how a trademark can be challenged other than in the first 12 weeks. I've been making merchandise for defunct teams and being very careful about the logos I used. I applied for licensing with a league and they said they were not interested in working with me. Afterwards, they started making their own merchandise using the logo on my best selling product and said they would sue me if I did not stop using the logo. I spoke to a lawyer about registering it as a trademark since I was using it first and was told it was an ornamental design. Then the league applied for the trademark and was denied, stating it is an ornamental design because the team does not exist.  With that reasoning, I believe it should apply for most defunct teams (other than major teams like you mentioned). For example, the NBA holds trademarks to ABA teams and will make a t-shirt once every 10 years or so and submit it as a specimen to renew the registration. Minor League Baseball has taken it to another level where they are taking screenshots of random eBay listings of old merchandise to renew registration. I don't believe the leagues should be able to hold these trademarks, so I am wondering how it can be disputed. 

beavers specimen.png

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There are proceedings that can be filed to cancel trademark registrations.  Consult with a local trademark attorney.  I suspect you'll need a retainer of at least $10k depending on which league you want to target.

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