I never practiced trademark law, and rarely write about it (for an exception, see here), so I was puzzled when I read earlier this month that the Colorado Rockies had applied for the exclusive rights to use the term “Rocktober” on merchandise (e.g., T-shirts, caps, banners) relating to its World Series appearance.
The term — which had for decades been used (and even trademarked) in connection with, among other things, rock music events and videogames — appears to have first been used in the baseball context by countless anonymous Rockies fans. It was then picked up by sports reporters, parroted by Colorado Governor Bill Ritter (who proclaimed October “Rocktober”), and, finally, expropriated, by the Rockies’ lawyers. How can the Rockies organization commandeer a painfully obvious pun that it didn’t even make up?
Trademark attorney Mark Sommers — who does not represent the Rockies — helped me understand it. (Sommers is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner in Washington, D.C.) I was mixing up copyright, patent, and trademark concepts, he explained. While being first to come up with something is crucial in the patent and copyright contexts, not so with trademarks. The latter are just “symbols that identify the source of a product or service,” he says. Though they may be, and often are, invented by the company that registers the mark, they need not be.
So, for instance, if the public spontaneously starts referring to McDonald’s as “Mickey D’s,” Sommers continues, McDonald’s can still go out and register the term as a trademark. Likewise, to cite some litigated examples, Volkswagen can register the publicly-coined terms “beetle” or “bug” (at least to refer to an adorable, economy car); IBM can belatedly grab “Big Blue”; and Playboy can retroactively claim “the Bunny Club.” Though coined by hoi polloi, these terms came to identify specific companies’ products, and could therefore become their registered trademarks.
Sommers believes “Rocktober” falls squarely into this same category, too, at least when used on merchandise (clothing, toys, cups, pennants) referring to a professional baseball team vying for a world championship.
I think I understand that one, but not the trademark recognition afforded another obvious pun relating to sports championships: “three-peat.” I know this sounds like an urban legend, but that term really was trademarked by Pat Riley, then coach of the Los Angeles Lakers, in late 1988. (More precisely, a company called Paperon de’ Paperoni S.p.a. — the Italian rendition of “Scrooge McDuck” — applied for the mark; was granted it in 1989 (see trademark); and then assigned it to Riley’s company, Riles & Co.) The Lakers had won two straight championships and were anticipating a third: the “three-peat.” The term was reportedly coined in this context by then-Laker guard Byron Scott.
But the Lakers never did three-peat. They got three-beat. (They were swept by the Pistons in the 1989 NBA Finals.) In contrast, the Chicago Bulls really did three-peat in 1993, and so did the New York Yankees in 2000. Nevertheless, some merchandisers reportedly paid Riley’s company for permission to use the term in merchandise relating to those achievements (though I haven’t been able to confirm that independently). In 1993, when the Bulls’ three-peat was imminent, one merchandiser did file a petition to cancel Riley’s trademark, but his bid was rejected in 2001, in an unintelligible, nonprecedential ruling, available here.)
This makes no sense to me, since nobody associates “three-peat” with the Lakers or Riley, who never achieved the feat, and everybody associates it with the Bulls, who did. If trademark is about identifying the source of a product, what’s Riley got to do with it? I have a call and an e-mail into Riley’s counsel, who will, I hope, explain it to me shortly.
Alternatively, maybe readers can explain it to me before he even gets back to me.
In the meantime, if you’re curious precisely which “goods and services” the Rockies lawyers would like to enjoy exclusive rights to use the term “Rocktober” with, here they are:
“Entertainment services, namely, baseball games, competitions, tournaments and exhibitions rendered live and through broadcast media including television, radio, satellite, wireless, audio and video media, telephone, fiber optics, wireless fidelity and other electronic media and via a global computer network or a commercial on-line service; mobile telephone or other electronic or digital communications network or device; information services, namely, providing information in the field of sports, entertainment and related topics, and providing for informational messages relating thereto; entertainment services, namely, providing multi-user interactive games all via a global computer network, mobile telephone or other electronic or digital communications network or device, or a commercial on-line service; educational services in the nature of baseball skills programs, baseball camps, seminars and clinics offered live and through on-line instruction; entertainment services, namely, production of programming broadcast via television, radio and a global computer network or a commercial on-line service; organizing community sporting events; entertainment services, namely production and distribution of programming broadcast via television, radio, cable transmission, satellite transmission, videotape, DVDs, a global computer network, mobile telephone or other electronic or digital communications network or device; live performances by costumed characters and performances featuring costumed or cartoon characters exhibited over television, satellite and video media; providing facilities for sports events, tournaments, competitions, exhibitions, and entertainment, including providing such events for public exhibition and television and radio broadcast and other media distribution, and providing other customary stadium services, namely, rental of stadium facilities and providing facilities for stadium tours and concerts. organizing and conducting fantasy sports, sports contests and sweepstakes; web site featuring sports, entertainment and related topics; fan clubs; festivals featuring a variety of sports and entertainment activities; publishing of electronic publications; providing on-line newsletters in the field of baseball; entertainment services in the nature of promoting baseball, baseball games, baseball exhibitions and baseball history; entertainment services in the nature of honoring players and fans by means of engraved bricks and panels located in a sports and entertainment facility” AND “Toys and sporting goods, namely stuffed toys, plush toys, bean bag toys, soft sculpture foam toys, foam novelty items, namely, foam fingers, puppets; balloons, checker sets, chess sets, dominoes, cribbage game, board games, card games, playing cards, dart boards and dart board accessories, namely, darts, dart shafts and dart flights, toy cars and trucks, toy mobiles, jigsaw and manipulative puzzles, yo-yo’s, toy banks, toy figures, toy vehicles, toy airplanes, dolls and doll accessories, bobbing head dolls, inflatable baseball bats, decorative wind socks, flying discs, miniature baseball bats, mini batting helmet replicas, toy necklaces, miniature toy baseballs, baseballs, holders for baseballs, autographed baseballs, footballs, softballs, playground balls, rubber action balls, golf balls, golf club head covers, golf club bags, golf putters, billiard accessories, namely, cues, billiard balls and cue cases, bowling balls, bowling bags, baseball bases, baseball bats, catcher’s masks, grip tape for baseball bats, baseball batting tees, pine tar bags for baseball, rosin bags for baseball, batting gloves, baseball gloves, baseball mitts, chest protectors for sports, athletic supporters, baseball pitching machines, inflatable toys; basketball backboards and nets; hand held units for playing video and electronic games; pinball games; snow globes; party favors in the nature of noise makers; costume masks; Christmas stockings, Christmas tree skirts, and Christmas tree ornaments, excluding confectionery and illumination articles” AND “Paper goods and printed matter, namely, trading cards, posters, stickers, decals, temporary tattoos, bumper stickers, score books, scorecards, printed baseball game programs, magazines and books featuring baseball, newsletters, brochures and pamphlets featuring baseball, writing pads, note paper, notebooks, binders, stationery-type portfolios, stationery folders, stationery sets, namely, writing paper, cards, and envelopes, commemorative envelopes, flip books, preprinted agenda organizers, memo boards, scrapbooks, autograph books, baseball card albums, book covers, bookmarks, bookends, calendars, greeting cards, postcards, printed bank checkbooks, checkbook covers, collectible stamps, rubber stamps, ink stamps, commemorative stamps, paper pennants, gift wrapping paper, paper gift and party bags, paper party goods in the nature of paper party decorations; paper coasters, paper napkins, facial tissue, paper tablecloths, mounted and un-mounted photographs, photograph albums, lithographs, plastic baseball card holders and collectors cases, paperweights, letter openers, pens, pencils, pencil top ornaments, crayons, markers, non-electric erasers, pencil sharpeners, pencil cases, un-graduated rulers, paper ticket holders and non-metal lanyards for paper ticket holders sold as a unit , art pictures, art prints” AND “Clothing, namely, caps, hats, visors, knitted headwear, headbands, bandannas, shirts, T-shirts, tank tops, blouses, sweaters, turtlenecks, pullovers, vests, shorts, pants, slacks, dresses, skirts, baseball uniforms, jerseys, warm-up suits, jogging suits, sweatshirts, sweatpants, underwear, boxer shorts, robes, sleepwear, pajamas, nightshirts, nightgowns, swimwear, clothing wraps, jackets, ponchos, cloth bibs, infant wear, infant diaper covers, cloth diaper sets with undershirt and diaper cover, jumpers, rompers, coveralls, creepers, baby booties, ties, belts, mittens, gloves, wristbands, earmuffs, scarves, footwear, socks, hosiery, slippers, and Halloween and masquerade costumes.”