By Neal Ternes
The Seattle Seahawks are attempting to trademark several phrases and words relating to their team identity. One of these, the phrase “Go Hawks,” which was filled on July 31, 2014, has been legally challenged by several organizations through the United States Patent and Trademark Office (USPTO).
The NBA’s Atlanta Hawks and NHL’s Chicago Blackhawks have both filed extensions with the USPTO in order for them to file oppositional claims to Seattle’s attempt to trademark the phrase which is commonly shared amongst fans of all three sports franchises. Additionally, Sally Mason, President of the University of Iowa, recently made public comments against Seattle’s attempt to trademark the phrase which she claims has been a part of the University of Iowa school fight song since before the Seattle Seahawks existed (Iowa’s sports teams are nicknamed the “Hawkeyes”). The USPTO published the mark in the Trademark Official Gazette in December, 2014, meaning that the USPTO has found no issue with Seattle’s claim to the mark. However the extensions filed by the Chicago and Atlanta organizations are currently preventing the phrase from being officially registered to the Seahawks organization.
A trademark is defined as any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the good of one manufacturer or seller from those of another and to indicate the source of the goods (15 U.S.C. § 1127). In order for a trademark to be granted, the mark must be used in commerce and must be distinctive, meaning that any mark must be unique for the trademark applicant. United States trademark law is primarily governed by the Lanham Act (15 U.S.C. § 1051, et seq.). Once a trademark is registered by the USPTO, the holder may file a claim against any infringement or unauthorized use of the mark within the United States. The Lanham Act uses a three pronged test to determine whether trademark infringement has occurred, asking whether 1) the conduct of the defendant has had a substantive effect on United States commerce, 2) the defendant is a U.S. citizen, and 3) whether there is any conflict with foreign law[1]. In order for a trademark to be registered, an application must be filed with the USPTO explaining the mark, why it deserves protection, and the context in which exclusivity should be granted. This is reviewed by the USPTO and, if accepted, is published in the Trademark Office Gazette. From this point, any party who claims that the registration of the trademark would be damaging to them can file a motion against the application which is then taken to the Trademark Trial and Appeal Board (TTAB) where arguments can be made by both the applicant and the dissenting party. Trademark applications which survive the TTAB process, or are unopposed by another entity for 30 days, are officially registered by the USPTO and the owners of that registered mark have exclusive ownership of their mark. In order to maintain trademark status, the owners must be consistently using the mark and vigilant in defending their right to exclusivity.
Seattle is seeking exclusive use of the phrase in several different instances including the arranging of contests, entertainment in the form of football games, providing information relating to sports and sporting events, and organizing community sport and social events. The trademark is not restricted to a specific font or color palate. Given that both the Chicago Blackhawks and Atlanta Hawks organizations have filed extensions with the USPTO, they are likely to formally oppose the application within the 90 day extension period. In their claims against Seattle’s attempt to trademark the phrase, Atlanta and Chicago must demonstrate (1) they are likely to be damaged by registration of the phrase and (2) that there is a valid legal argument as to why Seattle is not entitled to register the phrase. When a petition against a trademark application is filed, the USPTO declares an interference and a proceeding of the TTAB is held to determine the future of the mark. A USPTO commissioner can then refuse to register the mark, register the mark to the party found to be entitled to ownership, or order concurrent registration of the mark along with conditions or restriction on its use designed to prevent confusion. Opposition to a trademark can still be filed after its registration provided it is presented within five years of the publication of the mark in the Trademark Office Gazette or at any time the mark has been abandoned or is being misused in relation to the circumstances in which it has been granted protection.
This is not the first time that the Seattle Seahawks have been the subject of a controversial trademark dispute. The organization’s use of the phrase “12th Man” was met with stiff resistance by Texas A&M University, who owned the trademark to the phrase and filed a trademark violation claim in 2006. The two sides settled the lawsuit, and Texas A&M agreed to allow Seattle to use the phrase in a limited capacity as long as Seattle acknowledged the school’s ownership of the trademark and paid a usage fee of $5,000 per year. Seattle is only allowed to use the phrase on promotional material in certain states (Alaska, Hawaii, Idaho, Montana, Oregon, Utah and Washington) and cannot sell merchandise using the phrase[2]. The agreement was extended in 2011 and is set to expire in 2016 if it is not renewed.
Neal Ternes is a doctoral student at Florida State University.
[1] Steele v. Bulova Watch Co., Inc., 344 U.S. 280 (1952)
[2] https://drive.google.com/file/d/0Byz6Uzwv3AiueTY5Q0Z2Vk1TZlU/edit
