A federal judge in the Eastern District of Wisconsin has dismissed a trademark infringement claim against World Wrestling Entertainment (WWE).
The claim, which was brought by Albert Patterson (doing business as the World Wrestling Association, WWA), had argued that the WWE and Good Humor Breyer’s Ice Cream, a licensee of WWE, had infringed upon its trademarks. The court determined that the claim was without merit.
While both the WWA and WWE host wrestling shows, the district court held that the WWE mark was not “deceptively confusing” when held up against the WWA’s marks. Specifically, the court noted that the WWE’s “services and products have a distinctive style and manner,” and thus the likelihood of confusion with Patterson’s products and services is minimal. Further, the court seemed to ignore a determination from the U.S. Patent and Trademark Office (PTO) that the WWA and WWF marks were confusing, in concluding that there was no actual evidence of confusion in the marketplace, which is necessary to finding a trademark violation, under the Lanham Act.
In presenting the trademark claim, both WWE and WWA had to prove that “tacking” had occurred. “Tacking” is a rule used in establishing priority of trademarks, which allows a party “to add time spent using an older mark to the time spend using a newer mark, if both marks make the same continuing commercial impression.” The trademark that was created first in time will win a trademark infringement case.
But, according to the court, because WWE and WWA have had a volatile corporate name and trademark histories, their case was particularly “complicated and, at times, confusing.” Both corporate entities had shifted marketing campaigns and trade names several times over the previous four decades.
Both WWE and WWA attempted to convince the court that their business entity had used the mark longer than the other in a commercial basis. Patterson produced—from memory—40 shows promoted as WWA shows from 1978 to 2003. After questioning, Patterson conceded that his shows were not promoted as WWA until years later. WWE contended no shows prior to 1993 were promoted as WWA shows.
WWE only recently changed their corporate name from WWF. The wrestling show business entered into a confidential agreement with World Wide Fund for Nature, formerly World Wildlife Fund, over the use of the initials “WWF.” In 1994, the World Wildlife Fund, which registered the “WWF” trademark in 1965, entered into an agreement with the wrestling entertainment group allowing the wrestling association “limited permission to use the mark.” In 2004, an English Court of Appeals found the wrestling business to have breached that agreement and forced the then WWF to cease all use of the initials, prompting the wrestling business to change their corporate name.
Besides WWF, WWE has also held corporate names of Titan, World Wide Wrestling Federation (WWWF), World Wrestling Federation Entertainment, Inc. (WWFE), and Capital Wrestling Corporation. As a corporate entity, WWE frequently used the terms “Superstar Wrestling,” “Superstars of Wrestling,” and “Superstars.” WWE was founded by the McMahons, and is now a publicly traded corporation on the New York Stock Exchange.
Pivotal Year was 1990
A pivotal year in the case was 1990, when, after the WWF began using the “Superstar” terminology in their marketing campaign, Patterson attempted to file a change in corporate name form with the Wisconsin Secretary of State’s office. The judge believed that Patterson only tried to change his corporate name from King Kong to WWA Superstars to “piggyback the benefits that might flow from the identity of WWF.” Patterson had officially changed the corporate name to WWA Superstars after filing an injunction in court against WWF for trademark violations for the “Superstar” terminology.
Patterson claimed to have used the “WWA” and “Superstar” terminology before the WWF, even though his corporate name did not reflect this marketing campaign.
In June of 1991, Patterson again changed the name of his business entity by merging United Wrestling into World Wrestling Association, and since 1993, according to the court, “has continued to use . . . names other than World Wrestling Association.” According to the district court, Patterson has “not made a profit from his wrestling business endeavors since 1979” and after personally purchasing all of the assets of United Wrestling in December of 1992 for $9,500, Patterson’s “wholly-owned corporation, which he claimed owned the marks, was administratively dissolved” in November 1994.
It was not until late May 1992 that Titan, doing business as WWF, filed an application with the PTO for registration of the mark “WWF Superstars.” Titan claimed first use on April 18, 1992, well after Patterson’s August 1989 letter demanding cessation of the terms “Superstar” and his December 1989 letter offering to sell the same.
In 1995, Patterson, as Superstars of Wrestling, Inc. instituted cancellation proceedings before the PTO Trademark and Trial Appeals Board for the “WWF Superstars” mark.
The PTO dismissed the case in 1999 finding that there was “no likelihood of confusion among consumers because of the contemporaneous use and registration of the parties’ respective marks.” The PTO also noted that Patterson’s company “could suffer no real damages” from the then Titan’s registration of the mark.
The registration of the mark, however, was eventually cancelled by a Deputy Commissioner for Trademark Examination Policy in 2002, compelling Titan to surrender their registration number.
Patterson maintains that the trademark was cancelled upon his petition; however, the Deputy Commissioner did not mention Patterson’s letter in the cancellation letter and Patterson’s cancellation petition was dismissed as early as August of 1999.
Titan, as a result of the World Wide Fund for Nature agreement, ceased using the WWF logo in May of 2002, and worked to revamp the wrestling entertainment company under the rebranded WWE. Titan undertook a multi-million dollar advertising campaign to explain and promote its new mark.
Since May of 2002, Patterson has operated several shows with the WWA Superstars of Wrestling logo. The precise number of shows is contested. But of the eight shows he cites, according to the district court, “Patterson has inconsistently used different names, including ‘WWA Superstars of Wrestling,’ ‘World Wrestling Association WWA Superstars’ and “World Wrestling Association Superstars of Wrestling.'”
Patterson’s filing for the mark “World Wrestling Association” was rejected by the PTO in February 2002. The PTO determined there was a “likelihood of confusion between ‘World Wrestling Association’ and ‘World Wrestling Federation.'”
Patterson then brought this trademark infringement action against WWE and Good Humor, and advised the PTO of its pendency.
WWE failed to stop the present litigation through procedural techniques. Preclusion of action, that Patterson’s actions have been inconsistent with the current litigation was rejected by the district court. The district court also rejected res judicata claims, the idea that the same proceeding cannot be argued more than once. WWE also claimed judicial estoppel, the idea that a party cannot adopt a contrary legal position to successfully argued in an earlier legal proceeding. Finally, the district court rejected WWE’s claim for laches, an equitable doctrine that prevents untimely suits.
WWE has cross-sued on the same charges, but that matter remains undecided.
Albert Patterson d/b/a World Wrestling Association, Superstars of Wrestling, Inc., et al vs. World Wrestling Entertainment, Inc., and Good Humor Corporation, 2006 U.S. Dist. LEXIS 7453; 01/31/06
Attorneys of Record: (For Albert Patterson, doing business as World Wrestling Association Superstars of Wrestling Inc, Plaintiff): Charles D Boutwell, Boutwell Law Office, Northbrook, IL. (For World Wrestling Entertainment Inc, Good Humor Corp, doing business as Good Humor Breyers Ice Cream, Defendants): Curtis B Krasik, Jerry S McDevitt, Julie R Fenstermaker, Kirkpatrick & Lockhart Nicholson Graham LLP, Pittsburgh, PA.; Shepard A Davis, Burton & Davis, Milwaukee, WI.