San Francisco Giants Sued for Trademark Infringement of Their Own Logo

In what has to be an incredibly bold maneuver, Gogo Sports of Hayward, California is suing the San Francisco Giants baseball club for trademark infringement of the script “San Francisco” logo.  Gogo Sports appears to slap the logo on apparel and sells them on the street (can one say “knockoff?”).  Apparently, the United States Patent and Trademark Office (“USPTO”) registered Gogo Sports’ script “San Francisco” which looks similar to that of the San Francisco Giants’ script “San Francisco,” on the Supplemental Register on March 15, 2011.  Gogo Sports did add the word “California” in the “tail” of the logo. 

Gogo Sports’ Logo:

San Francisco Giants’ Logo:

              

The registration on the Supplemental Register means that the USPTO found Gogo Sports’ mark descriptive.  What is amazing, however, is the fact that the USPTO did not note that Gogo Sports’ mark was similar to that of the Giants’ baseball team’s mark.  Apparently, the USPTO only searched its own database.  The Examining Attorney most definitely must not have been a baseball fan! 

Even more amazing is the fact that Major League Baseball (“MLB”) sought to register their script logo shortly after learning of Gogo Sports’ registration.  MLB’s application was denied because of Gogo Sports’ “virtually identical” mark.  The refusal to register the mark by the USPTO does not mean that the Giants or MLB do not have any rights in the mark.  This is what makes no sense.  Instead of seeking to register the mark, it seems to me that MLB or the Giants would have been better served in seeking cancellation of Gogo Sports’ mark or suing for infringement.  The Giants and MLB have superior rights to the script San Francisco logo since they have been using it in commerce for decades. By way of contrast, Gogo Sports began first use in 2008. 

The long and short of it is: you can have rights to a trademark without registration.  Registering has certain advantages.  Nevertheless, it seems that Gogo Sports’ lawsuit will not be well taken and that the MLB and San Francisco Giants will be able to (and should) prevail. 

More From Creative Fans

                Not only are books, music, or movies the subject of “fan fiction,” but there is now a contingent of do-it-yourselfers who recreate runway looks for pennies on the dollar.  These do-it-yourselfers will use common materials to make items that are similar to the fashions created by the luxury brands (e.g. Prada, Chanel, Oscar de la Renta, etc.).  They appear to be fashion enthusiasts who take pleasure in seeing an item and creating it using inexpensive materials and tools.   

                Surprisingly, the luxury brands are not targeting these do-it-yourselfers for copyright infringement as they do with other knockoff makers. Instead, they appear to embrace the do-it-yourselfers as fans and viewing them as potential customers in the future.  In some cases, the luxury brands utilize the creative efforts of the do-it-yourselfers to help create accessories for the fashion designers or assist in creating products. 

                One reason that the fashion designers may embrace rather than fight the do-it-yourselfers is that the do-it-yourselfers are not interested in selling their wares.  They seem to thrive on helping people make their own.  The luxury brands appear to view the do-it-yourselfers benignly because the copying is not necessarily for profit.  I guess it is true that imitation is the sincerest form of flattery. 

Lady Gaga vs. LadyGaga.org . . . The “Real” Gaga Loses

                In my earlier post, I discussed fan sites in the context of copyright law.  Well, Lady Gaga challenged a fan site, LadyGaga.org, under a trademark theory.  Lady Gaga sought to shutdown the fan site because she claimed that the owner of the domain LadyGaga.org was cybersquatting.  The Anticybersquatting Consumer Protection Act (part of the Lanham Act which is the Federal law on trademarks) was enacted in 1999 in response to persons seeking to sell famous domain names to their rightful trademark owners.  California has its own cyberpiracy statute which is slightly different than the Anticybersquatting Consumer Protection Act (“ACPA”).  However, both statutes create civil liability for anyone who registers a domain name that is the same or “substantially and confusingly similar” to the name of another living person without that person’s consent.  The cybersquatter must have the specific intent of profiting by selling the name to that person or a third party.  This is where Lady Gaga’s fight went awry.

                While Lady Gaga was able to prove that her mark was sufficiently famous to allow her to claim common law trademark rights, she was unable to convince the National Arbitration Forum (where she filed her complaint) that the fan site was exploiting Lady Gaga’s trademark for its own gain.  As currently constituted, the fan site is a blog dedicated to the singer.  There were no advertisements displayed, there was no merchandise sold, or any other commercial activity related to the site.  As stated by the arbitration panel:  Lady Gaga “cannot have fame without fans, and fans cannot have fan sites without referring to the objects of their adoration.”  In other words, the panel seemed to believe that the fan site owner was not using the Lady Gaga’s name or trademark in a trademark sense, but merely in a way to describe the object of the site’s “adoration.”  It also helped that the fan site contained a number of disclaimers, especially making clear that the site was not an “official” Lady Gaga site. 

                What does this mean for fan sites? Clearly, if you are going to have a fan site, then have a fan site.  The moment the fan site becomes a vehicle to attempt to turn a profit or make money, then it may be subject the owner of the site to an ACPA lawsuit, as well as various trademark claims.  In fact, the arbitration panel said as much—just not in so many words.  To wit, the arbitration panel warned that should the fan site attempt to make a profit in the future, then the result may different and Lady Gaga may re-file and win her complaint.  Disclaimers help in making it clear to consumers that the site is not related, sponsored by, affiliated with, etc. to the object of the site. It is always wise to consult an attorney if you are ever unsure as to whether your site crosses a line.