“To be sure, the phrase ‘Play Gloria!’ will now always be part of St. Louis Blues’ lore. But trademarks require proper use and enforcement, and regardless of where it began, how the slogan has been used since suggests it may not be protectable at all.”
In early January 2019, five Blues players were in Philadelphia watching the Eagles-Bears NFL wild-card playoff game at a local dive bar, Jacks NYB. The song “Gloria” came on and a patron latched on to it, urging the bar to keep playing it during every commercial break. A few beers and an Eagles victory later, the bar’s chants of “Play Gloria!” have transformed it into a living meme. The Blues players brought the song into the locker room and out onto the ice, and the legend grew like a playoff beard through their epic Cup run.
Now, after the ticker-tape has settled, Jacks NYB claims it owns trademark rights to the phrase “Play Gloria!”; they not only filed trademark applications for the phrase, but sent demand letters asserting their rights. It’s a move that feels a little too straight out of the TV show It’s Always Sunny in Philadelphia. And like most other IP disputes that manage to reach the sports-channel crawl, it is rooted in some basic misunderstandings about the nature of trademarks.
It’s All About Connection
The essence of a trademark is a connection between a mark and the source of goods or services. So, while the bar tries to assert rights to the catch-phrase, it’s hard to deny that the hockey team, and not the bar, popularized it, and that the sporting public presently sees “Play Gloria!” and thinks of the Blues. Setting aside any issues of who-used-it-first priority, the bar has a big hurdle to overcome. If the Blues players had walked in to Jacks NYB and co-opted the bar’s existing line of shirts, there would seem to be claim for what is known as “reverse confusion”—taking an earlier user’s mark and confusing the public through a later and often larger-scale use. But that does not look to be the case here. The bar’s shirts, which happen to be in the Blues’ blue-and- yellow color scheme, exist because of the hockey team.
Before getting into any more details, we should stop and ask a very fundamental question—is “Play Gloria!” even protectable as a trademark at this point? Or in other words, is this hockey fight worth fighting? To be sure, the phrase will now always be part of St. Louis Blues’ lore. But trademarks require proper use and enforcement, and regardless of where it began, how the slogan “Play Gloria!” has been used since suggests it may not be protectable at all.
Within the pages of press surrounding the playoff run, “Play Gloria!” was not identified as a trademark of the team or otherwise, just a rallying cry that accompanied a kitschy new victory song. It has become a unifying chant for the fans, and not a proprietary mark. Simply put, if the relevant public does not see the phrase as a trademark, it likely isn’t one.
As to proper enforcement, “Play Gloria!” merchandise has already ramped up all over the internet the last few months, with sales by the team, the bar, and a number of other parties. To be fair, the bar has now sent some letters. But ignoring for the moment whether the phrase can be protectable in theory, one doubts whether the team or the bar can force that proverbial cat back into the bag (or wants to pay the legal fees to try and do that from this point forward).
So, there is a much stronger argument that “Play Gloria!” is already not a protectable trademark, but of course, that has not stopped the bar from trying. Jacks NYB went ahead and filed two trademark applications for “Play Gloria!”, which, upon a brief inspection, provide a rather impressive rundown of trademark red flags, and which further call into question whether the bar actually has the rights they claim.
- First-to-Use Rights. Trademark rights in the U.S. are given to those who are first-to-use them, so the absence of an application by the St. Louis Blues, or anyone else, is not determinative of whether they lack any rights. To support its applications and claims against the Blues, the bar will need to show first use of “Play Gloria!” in commerce.The bar claims a first-use date of January 18, 2019, less than two weeks after the “Gloria” night (and before the slogan had really taken hold in the media). But “use in commerce” does not mean drunk patrons chanting “Play Gloria!”—it means actual, legitimate sales of branded goods or services, and in this case, the “t-shirts” on which the bar bases its claim and application.
- Bona Fide Intent to Use. As for the bar’s second intent-to-use application, this includes not just various promotional items and additional clothing items (that are no doubt “coming soon”), but also “advertising services in the field of sports and entertainment.” While an intent-to-use application allows a broad view of future goods/services, there must be a bona fide intent to actually use them in commerce at some point. The advertising services in particular appear geared more toward “blocking” a future application from the Blues, as opposed to genuine intended use from a sports bar. That itself is a red flag that may support an opposition to registration. (Note also that the bar has not filed an application for the obvious “bar services,” which would make their intentions seem more bona fide.)
- Trademark Rights Tied to Goods. Even assuming the bar would have a solid claim to true first-sale priority on t-shirts, they do not have “exclusive rights” generally, as the press frequently states. Their rights extend only to shirts and reasonably related goods. It is not clear that the services of the hockey team (e.g., “providing entertainment services in the nature of hockey games”) would necessarily conflict in the eyes of the U.S. Patent and Trademark Office (USPTO), which may be why the bar filed the broader second application.
- “Ornamental” Use and Specimen Issues. This is really a more specific version of the “is this a trademark?” question, as applied to the actual clothing the bar has filed as evidence of use. Trademark attorneys see the combination of a slogan trademark and use on clothing and know there is a potential “ornamental use” issue. Slogans broadly used on the face of a shirt do not typically function as a trademark, and the USPTO refuses applications accordingly. The rationale is that consumers see the slogan and do not see a “brand,” but just a slogan applied to shirts that may be free for anyone to use, absent other evidence.The evidence of use (“specimen”) submitted with the bar’s initial application confirms an expected ornamental refusal, as it comprises a large-scale use of the phrase across the front of a shirt. The shirt does reference Jacks NYB in a small circular border, but arguably that smaller reference signifies where the shirt comes from (i.e., that’s the trademark), not the larger “Play Gloria!” slogan emblazoned on it.The specimen filed raises other procedural issues as well; it comprises an Instagram post from the bar without pricing or traditional ordering information, only an invitation to “email [us] to buy,” which one would also expect to be scrutinized by the USPTO.
The Smell Test
At least some of the above issues may be overcome at the USPTO by argument or amendment, so there may be some hope of the bar’s applications proceeding past the examination stage in time. But setting aside all of those procedural hurdles, as outlined above, there are more fundamental flaws in trying to protect “Play Gloria!” as the bar’s trademark at this point.
All told, Jacks NYB has gained some great publicity, which you cannot begrudge any local watering hole, and perhaps that’s the point. But it’s hard to see how Jacks NYB has a reasonable claim to stop the Blues from their own rallying cry under the law. In terms of the trademark “smell test,” this claim looks to fall somewhere in between that of a South Philly dive bar and an old hockey bag.
Hat-tip to my colleague Jen Itzkoff for her edits and insight.
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