Patriots' owner fumbles registration of 19-0 THE PERFECT SEASON
United States of America
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In Kraft Group LLC v Harpole (Case 91185033, April 22 2009), in a precedential opinion, the US Trademark Trial and Appeal Board (TTAB) has ruled that the owner of the New England Patriots, a US professional football club, had failed to show that its application for the mark 19-0 THE PERFECT SEASON had priority over William Harpole’s application for the mark.
When Harpole, a former staffer of the Denver Broncos, a rival US football club in the National Football League (NFL), filed his application for the trademark 19-0 THE PERFECT SEASON on November 8 2007, the US sports media and football fans were focused on whether the Patriots would be the first NFL team since the Miami Dolphins in 1972 to have an undefeated season. The 19-0 mark refers to the 16 regular season games, plus two playoff games and the championship game, the Super Bowl, totalling 19 wins.
Since the Patriots could not brag rights to a 19-0 record until after the Super Bowl, which was played on February 3 2008, it was speculative whether the 19-0 mark would be a valuable trademark to exploit on sports merchandise. Interestingly, Harpole filed an application for the mark three days after the Patriots beat their arch-rivals and 2007 Super Bowl champions, the Indianapolis Colts.
After the Patriots' victory, many US sports pundits believed that the Patriots were destined for the 'perfect season', likely to culminate in a Super Bowl victory on February 3 2008. However, the Patriots did not file a trademark application for the 19-0 mark until January 17 2008. Moreover, the value of the mark depreciated considerably when the New York Giants dramatically upset the Patriots in the Super Bowl.
Nevertheless, the Patriots were undeterred by losing the championship and the growing popularity of the newly coined phrase '18 and D’oh' to symbolize their now imperfect season. On July 3 2008 the Patriots filed an opposition against Harpole’s application for the 19-0 mark on the grounds that:
- the Patriots' application had priority; and
- Harpole’s application for the same mark was likely to cause confusion.
Importantly, the Patriots did not claim that it had used the mark before Harpole’s filing date of November 7 2007.
The Patriots argued that Harpole’s application, which was originally filed for the Supplemental Register, but was later amended to seek registration on the Principal Register under Section 1(b) of the Lanham Act (an 'intent to use' application), was void because Harpole had failed to state that the 19-0 mark was in lawful use in commerce when he filed the application. The Patriots cited Trademark Rule 2.47(a), which mandates that an applicant must specify on its application for the Supplemental Register that the mark has been in use in commerce. The Patriots argued that Harpole did not satisfy this requirement because he was not using the mark when he filed the application and, as a result, the application should be deemed void.
In the alternative, the Patriots claimed that if the application was not deemed void, then its effective filing date should have been the date on which Harpole’s application was amended to seek registration on the Principal Register (April 22 2008). If the effective date for Harpole’s application was changed to April 22 2008, then the Patriots would have priority. The Patriots advanced a creative theory to support the argument that the effective filing date should be April 22 2008: the filing date of an application for registration on the Supplemental Register which is amended to seek registration on the Principal Register changes to the date on which the application is amended and an allegation of use is filed.
The TTAB was not persuaded that Harpole’s application was void, nor did it deem that the effective date of the application was the date on which it was amended to seek registration on the Principal Register. In dismissing the Patriots' argument that the application at issue was void, the TTAB criticized the Patriots for:
“conflat[ing] the rule for obtaining a filing date, namely, Trademark Rule 2.21, with rules that set forth the requirements for obtaining a registration under a particular statutory basis and for a particular register.”
The TTAB stated that Harpole was not required to specify the basis for seeking registration on the Supplemental Register to receive a filing date because:
- the examining attorney will require that an applicant conform with the requirements of the filing bases; and
- under Section 806 of the Trademark Manual and Examining Procedure, an applicant must specify and meet the requirements of one or more filing bases before the mark is approved for publication only for the purposes of opposition or registration on the Supplement Register, not to acquire a filing date.
In rejecting the Patriots' alternative argument, the TTAB ruled that under Trademark Rule 2.75(b), the actual filing date is changed to an effective date only when an 'intent to use' application seeking registration on the Principal Register is amended to seek registration on the Supplemental Register.
The TTAB rejected the Patriots' theory that the converse should hold true. The TTAB noted that “a continuing valid basis is presumed when an applicant amends its application for registration on the Supplemental Register to seek registration on the Principal Register.” Accordingly, when Harpole amended his application to assert intent to use as a basis, the TTAB deemed that he had a good-faith intention to use the mark. Therefore, November 8 2007 remained the filing date of the application. As a result, the Patriots could not prove priority as a matter of law. The opposition was dismissed, subject to Harpole's constructive use of the mark.
Arguably, the Patriots should have filed and/or used the mark as soon as the sports media started buzzing about their chances for a perfect season. However, sports teams are notoriously superstitious about making such audacious boasts. For that reason, it is hard to imagine that Harpole will be making many sales of 19-0 THE PERFECT SEASON-branded sports gear to even the most sanguine fans. Further spelling the demise of the mark, the NFL is actively considering extending the regular season to 17 games. As a result of the TTAB’s decision, it is clear that the owner of the 20-0 THE PERFECT SEASON mark may not be the team reaching or promising to reach such a rare achievement - rather, it may just be the applicant who wins the footrace to the US Patent and Trademark Office.
Howard J Shire and Mimi Rupp, Kenyon & Kenyon LLP, New York
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