Is an NFL Team Coming to Duluth? NFL Files Application to Register DULUTH ESKIMOS as a Trademark for Professional Football Games, Related Services

On April 25, the day the draft started, NFL Properties LLC (the owner of famous NFL trademarks like SUPER BOWL, the NFL logo, and PRO BOWL) filed two federal trademark applications for DULUTH ESKIMOS with the U.S. Patent and Trademark Office.

Apparently, the Duluth Eskimos played in the National Football League in the 1926 and 1927 seasons. While NFL Properties LLC has filed trademark applications for vintage football teams in the past, like the CANTON BULLDOGS, BALTIMORE COLTS, and the BOSTON REDSKINS, those applications only covered apparel (presumably because the NFL was selling vintage football clothing).

While one of the DULUTH ESKIMOS applications also covers apparel, it is the other one that is most interesting. The second DULUTH ESKIMOS application covers the following services in Class 41:

Education and entertainment services in the nature of professional football games and exhibitions; providing sports and entertainment information via a global computer network or a commercial on-line computer service, or by cable, satellite, television or radio; arranging and conducting athletic competitions, namely, professional football games and exhibitions; football fan club services, namely, personal appearances by a costumed mascot for professional football teams; entertainment services, namely, live musical and dance performances provided during intervals at sports events; educational services, namely, conducting physical education programs

Does this mean the NFL is bringing a franchise to Duluth? On the one hand, the intent-to-use filing basis of the application does suggest that NFL Properties LLC has a bona fide intention to provide these services under this trademark in the near future. TMEP 806.01(b); 15 USC 1051(b). And this application will go dead unless the NFL actually starts using the DULUTH ESKIMOS trademark in conjunction with these services and submits sufficient proof of such use to the USPTO. See TMEP 1103. Finally, these are the typical services you see listed in a trademark application or registration for an NFL team's name.

On the other hand, NFL Properties LLC doesn't own any other trademarks for NFL team names. As I've blogged about before, most NFL team names are owned by the local franchise owner (although it is an attorney at the NFL who files the applications in the local franchise's name). For example, New England Patriots LLC owns the NEW ENGLAND PATRIOTS trademarks and Cincinnati Bengals, Inc. owns the CINCINNATI BENGALS trademarks. If this application is actually for a team's name, it would be the only team name owned by NFL Properties LLC instead of the local franchise (though, technically, NFL Properties LLC could later assign this trademark to the local franchise).

Perhaps the filings were made only because the NFL intends to send apparel or otherwise promote NFL games in conjunction with this vintage trademark? Or perhaps there are talks to bring back the Duluth Eskimos? Unfortunately, it's impossible to ascertain the NFL's intention from these filings alone. As the applications progress, we may get more details.

Commissioner of Baseball Files Four Applications to Register World Series Trophy as a Trademark

Major League Baseball's Commissioner's Trophy, given to the winner of the World Series, may be a federally registered trademark soon. On May 10th, the Office of the Commissioner of Baseball filed four federal trademark applications with the U.S. Patent and Trademark Office for the trophy. These appear to be the first federal trademark applications for the trophy filed by the Commissioner.

The applications describe the mark as "a design representing a three-dimensional object comprised of thirty flags mounted on poles and arranged in a circle on a round base. The interior of the base consists of a slightly raised dome." According to the application, this particular design was first used in commerce on July 7, 2000 (I don't know enough about baseball to know the significance of that date, if any).

The Commissioner filed each application in one class of goods and services (hence the four applications). The goods and services covered by these applications include:

• Trophies of precious metal; ornamental pins; lapel pins; rings; bracelets; charms; non-monetary coins; clocks; key chains; key rings (Class 14);
• Trophies of common metal (Class 6);
• Entertainment services, namely, baseball games and baseball exhibitions; Organizing and conducting an array of athletic events rendered live and recorded for distribution through broadcast media; Providing recognition and incentives by the way of awards to demonstrate excellence in the field of baseball (Class 41); and
• Clothing, namely, headwear, shirts, sweatshirts, jackets, infant wear (Class 25).

As I've blogged about before, it is certainly possible to obtain a federal trademark registration for the way something looks. Generally, a configuration cannot be not functional if it is to be registered and protected as a trademark. See TMEP 1202.02(a)(iii); 15 USC 1052(e)(5). How does one determine whether a product feature or design is functional? Generally four factors are considered:

• the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
• advertising by the applicant that touts the utilitarian advantages of the design;
• facts pertaining to the availability of alternative designs; and
• facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

See TMEP 1202.02(a)(v);  In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-1341 (C.C.P.A. 1982). Additionally, the product feature or design, as with all trademarks, must be inherently distinctive or have acquired distinctiveness. TMEP 1202.02(b). Note that product designs, as opposed to product packaging, can never be inherently distinctive. TMEP 1202.02(b)(i).

The MLB is not the only professional sports league to seek a federal trademark registration for its championship trophy. The NFL has owned a federal registration for the Vince Lombardi Trophy since 1983. And in 2015, the National Hockey League obtained a federal registration for "a three-dimensional configuration of a trophy with a ridged circular base, that narrows into an open bowl shape with curved lines radiating upward from the base of the bowl" (aka the Stanley Cup).

Chicago Bulls Name Change or Nicknames? Multiple Trademark Applications Filed By Team

On December 14th, the Chicago Bulls (well, technically Northwest Sports, LLC d/b/a Chicago Bulls) filed six federal trademark applications for HEARTLAND BULLS, WINDY CITY BULLS, and GREAT LAKES BULLS. The address listed for Northwest Sports, LLC matches the address listed for the Chicago Bulls' executive offices, suggesting that this is the legal entity that owns the team (or at least holds its trademarks).

The Bulls filed two applications for each nickname. One set of applications relates to "[e]ntertainment and educational services in the nature of ongoing television and radio programs in the field of basketball and rendering live basketball games and basketball exhibitions.." and various related services while the other set relates to a wide range of clothing items.

The Bulls filed all of these applications on an intent-to-use basis, which means the team is not using the names in commerce (i.e. selling the related goods or offering the related services under the marks) yet but has a plan to do so in the near future. Unless the Chicago Bulls plan on changing their team name, these trademark applications probably relate to potential nicknames the team plans to use in referring to itself and on related team merchandise. By filing the applications, the team is trying to secure the exclusive, nationwide right to use the terms on the goods and services listed in the trademark applications.