PICKLEBALL JUNKIE Trademark Application in a Pickle

One of the most common trademark application mistakes I see, usually by pro se applicants, is filing a trademark application for a phrase on the front of a shirt. That is exactly what a North Carolina corporation did on April 3rd when it filed a federal trademark application for PICKLEBALL JUNKIE. The applicant listed "[a]thletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, [and] athletic uniforms" in Class 025 as the related goods.

The applicant submitted a picture of the t-shirt seen above as its specimen of use. However, phrases on the front of shirts are almost never function as a trademark because they are considered purely decorative (rather than indicating source). The Trademark Office explains "[s]ubject matter that is merely a decorative feature does not identify and distinguish the applicant's goods and, thus, does not function as a trademark." TMEP 1202.03.

Specifically relating to apparel, the Trademark Office has said "[s]logans or phrases used on items such as t-shirts and sweatshirts...have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods." TMEP 1202.03(f)(i).

So how does one protect a clothing related trademark? The Trademark Office again provides some insight - "[a] small, neat, and discrete word or design feature (e.g., small design of animal over pocket or breast portion of shirt) may be likely to create the commercial impression of a trademark..." TMEP 1202.03(a). Additionally, a trademark appearing on the tag of a shirt also typically functions as a trademark. See TMEP 904.03(a). I have blogged about trademarks on clothing before here.

The Trademark Office will not refund filing fees for applications refused registration as ornamental or decorative matter and the $225 filing fee the applicant paid for the PICKLEBALL JUNKIE application is probably lost as well. All the more reason to speak with a trademark attorney before filing a trademark application.

Side note - what is pickleball?

How to Lose Your Trademark Filing Fees - File For Unauthorized NFL Apparel

Take a look at the t-shirt design below. Did the combination of the city name and colors immediately bring a professional sports team to mind? Maybe the Pittsburgh Steelers? I'm guessing for most of you it did. That type of association with the goodwill of another, when unauthorized, is exactly the type of harm trademark laws are designed to prevent.

It's also the reason seven trademark applications recently filed in the U.S. Patent and Trademark Office (USPTO) by an individual in Philadelphia are as good as dead. On January 7th, that individual filed six other federal trademark applications for similar t-shirt designs related to other cities and teams as seen below.

The individual filed all these applications in Class 25 for "athletic shirts" and spent $1,575 in filing fees ($225/each). Those filing fees are nonrefundable, even if the applications do not mature into a registration (which is this case is extremely likely).

The Pittsburgh Steelers (like every other professional sports team) own a variety of federal trademark registrations. For example, the team owns a federal trademark registration in Class 25 for a black and yellow design on jerseys. The jerseys are so similar to the athletic shirts, which also claim black and yellow as a feature of the mark, filed by the individual in Philadelphia (both are apparel). The USPTO will almost certainly issue a likelihood of confusion office action refusing to register this individual's mark given the previous registrations.

If that does not happen, the NFL or the team will oppose this trademark application and send a cease and desist to the applicant. As most trademark attorneys, including myself, know from personal experience, professional sports teams are incredibly aggressive about protecting their intellectual property. Besides their federal registrations, most teams claim a broad range of common law trademark rights that encompass use of the team's colors in conjunction with the city name (or anything that could be associated with the team like a mascot, nickname, logo, or design).

Of course, selling merchandise of a professional sports team is perfectly legal with a valid license from the team. In this case, however, it does not appear that the individual who filed these applicants has a license. Unfortunately, that means his $1,575 in filing fees will be lost, he will receive a cease and desist from the NFL or the team (which is more likely now that he made himself known with these public filings), will likely be required to destroy any merchandise he ordered, he may need to turn over his profits to the NFL or the team, and he risks personal liability for infringement because he listed himself individually as an owner of the trademarks rather than a business entity.

How do you avoid getting yourself into the same predicament? Obtain a license from the team before selling any merchandise and hire an attorney to assist you. In a brief initial consultation (which probably would have been free), any good attorney would have alerted this applicant that these trademark filings are not advisable and could put himself at significant risk of liability. In other words, a five minute phone call could have saved him $1,575.