It has been quite a year for fans of the 2016 Chicago Cubs, the 145th season that the team has taken to the baseball diamond after more than a century of play in the famed Wrigley Field. In the regular season, the Cubs won more than 100 games of the full 162-game schedule, topping the triple digit mark in wins for the first time since 1935. By beating the San Francisco Giants in the National League Championship Series, the Cubs have returned to Major League Baseball’s World Series for the first time since 1945, one month after the end of World War II and the same year in which Jackie Robinson was signed by Branch Rickey to play for the farm team of the Brooklyn Dodgers (he would break baseball’s color line two years later).
The Cubs have been making headlines not just for the team’s stellar play but also the franchise’s recent activities in protecting the trademarks it owns from infringement. In September, the Cubs and the MLB filed a legal action in the U.S. District Court for the Northern District of Illinois (N.D. Ill.) which sought a court order for ex parte seizures of trademark-infringing counterfeit goods, especially clothing and apparel, sold by vendors outside of Wrigley Field. With the team fighting for the MLB championship, the Cubs’ legal team has also filed petitions to officially challenge trademarks which the organization charges could cause consumer confusion with marks held by the baseball franchise.
On October 17th, the Cubs filed a pair of actions with the Trademark Trial and Appeal Board (TTAB) at the U.S. Patent and Trademark Office to challenge marks registered by two separate entities. One of the businesses holding a trademark challenged by the Cubs is CopyClear, a business services firm located in Elizabethtown, PA. The Cubs are challenging the validity of CopyClear’s U.S. Trademark Serial No. 86795960 which covers the use of an illustration including words. The mark consists of a large stylized “C” followed by the wording “OPY” and “LEAR” in the C’s gap in order to create the impression of both the words “COPY” and “CLEAR”. CopyClear has registered the use of the mark for legal services, specifically the licensing of intellectual property in the field of copyrights. The mark was filed by CopyClear with the USPTO last October.
The Chicago Cubs’ notice of opposition, available for free through the USPTO’s TTABVUE search portal, states that the Cubs’ ground of opposition is priority and likelihood of confusion. The Cubs’ cite a number of trademarks held by the baseball organization, mostly those which consist of a large stylized letter “C” and some of which include content in the C’s gap, including the wording “UBS” to create the impression of the word “CUBS” similar to the way that CopyClear’s wording achieves the “COPY” and “CLEAR” impressions. The earliest of these trademarks was first registered in May 1969. None of the Cubs’ trademarks in this complaint are registered for international class 45, which is the class where CopyClear’s trademark resides. The complaint also presents CopyClear’s mark next to one of the Cubs’ marks in color, showing that both stylized Cs are colored red, although CopyClear’s trademark does not claim color as a feature of its mark.
Cubs fans have been able to “fly the W” a number of times this postseason, referring to the win flag that is raised at Wrigley Stadium after every Cubs win. This “W” forms the basis of another TTAB challenge recently filed by the baseball organization. On the same day that it filed a TTAB challenge against CopyClear, the Cubs also filed a petition challenging U.S. Trademark Serial No. 86705124, a mark filed last July 2015 by design firm Laserwave Graphics of New Brunswick, NJ. It covers the use of an illustration including wording which consists of a large stylized “W” within a circle. Laserwave Graphics has registered the mark to be used on watches, including jewelry watches and watch parts, online retail store services featuring watches and providing a website featuring computer application software which can be used to design and purchase watches.
The TTAB challenge filed by the Chicago Cubs on the ‘124 trademark cites three marks held by the baseball organization which cover the use of a large stylized “W” against a white background. The Cubs’ marks also claim the use of the color blue for the large “W” while the ‘124 application does not claim the use of any color with Laserwave’s mark. These trademarks held by the baseball organization protect the use of the large blue “W” on fabric flags, cloth pennants and entertainment services, namely the arranging and conducting of baseball games. The earliest of these trademarks was applied for in July 2004.
Although Laserwave hasn’t claimed the use of its ‘124 mark for any goods or services related to baseball, the Cubs’ petition includes evidence of a watch band having a baseball design and incorporating the Laserwave mark. This use of the mark in combination with a baseball design “indicates an intent to trade on [Chicago Cubs’] valuable goodwill in the Cubs W Marks.”
The Chicago Cubs have been a party to 49 cases petitioned at TTAB since the start of 2016. In October, the Cubs also filed an action against advanced film equipment firm Cinegears, Inc. to challenge that company’s U.S. Trademark Serial No. 86759960. This application for trademark registration would protect the use of an illustration with wording consisting of a large stylized “C” with gear teeth on the outside portion of the “C”. This mark, first published by the USPTO in September, covers Cinegears’ use of the illustration on cinematographic equipment and accessories specially adapted for cinematographic equipment. The Cubs’ TTAB petition, filed October 12th, seeks a 90-day extension to oppose for a good cause to give the baseball organization more time to investigate the ‘960 mark.
Elsewhere in the sports world, the Cubs filed a TTAB petition against a mark held by the National Hockey League’s Colorado Avalanche, U.S. Trademark Serial No. 86726497. The ‘497 mark covers an illustration with wording which consists of the wording “CO” with the “O” contained within the “C” and both letters being embedded in a mountain design contained within a triangle. The Avalanche registered the mark for use on clothing. The Chicago Cubs filed a notice of opposition to TTAB on June 22nd, noting that the large stylized “C” and the blue-red color scheme employed by the Avalanche is substantially similar to the Cubs’ own color scheme. However, on July 7th, the Cubs filed a motion to withdraw its opposition to ‘497 trademark application without prejudice, ending those proceedings at TTAB.