Just when I thought there would be nothing to write about for a few days except an actual soccer game, the Philadelphia Union does it again. The Union has recently filed an application to register the trademark “DOOP.” An excellent article by Chris Savino, contributor to the Brotherly Game, can be found here. I would like to add my thoughts about the legal basis and status of this trademark registration application. The lawyer in me cannot resist doing a follow-up on some of the issues raised in the article.
Information from the U.S. Patent and Trademark Office database can be found here. The Union filed the trademark registration application on February 7, 2011. The application is listed as initialized and not assigned to an examiner. The Union is seeking trademark registration for the following categories of goods using the international schedule of classes of goods: magnets, bumper stickers, decals, posters, printed paper, signs, prints, stickers, plastic key chains, drinking glasses, mugs, plastic water bottles sold empty, cloth pennants, fabric flags, towels, hats, jackets, scarves, long and short-sleeved t-shirts, sweatshirts, and “entertainment in the nature of soccer games.”
The Union’s attempt to register this mark raises several questions. The use of DOOP, from the song “Maria (I Like It Loud)” by German techno artist Scooter, was the result of a collaboration between Union coach Peter Nowak and members of the supporters’ group Sons of Ben. Quite frankly, the Union marketing department doesn’t seem to be clever enough to have come up with this on their own. DOOP has been used subsequently by the Sons of Ben on shirts, banners, and other items and by other companies which produce Union-related apparel, such as Bark Tees LLC. I have also found DOOP merchandise in other places on the Internet. The registration of this mark also raises questions about whether or not the Union will take similar action with respect to other campaigns it has cooperated on with supporters, such as Stache Bash and Help Kick Hunger. I checked, and Zolo is subject of a trademark registration application with respect to some items of apparel.
DOOP has also been used by soccer teams overseas, such as Borussia Monchengladbach, Steaua Bucharest, and US Citta di Palermo. There could be a potential conflict between other clubs who use DOOP and the Union’s attempts to register and claim exclusive use of this mark as it relates to “entertainment in the nature of soccer games.” From reviewing the trademark application documents, it is unclear whether the Union has filed under the Madrid Protocol for registration of this mark in other countries.
The Union have claimed that the intent was not to endanger relationships with existing third party vendors, which presumably means that those vendors might be able to continue to use the mark. However, current vendors would have no recourse if the Union decided to change its policy and enforce its exclusive rights to the mark or if another vendor insists that it be given the exclusive right to produce DOOP merchandise.
The status of this trademark registration application is still an open question. The Union claims the mark is registered, however the USPTO TARR database found here states that this application will be assigned to an examining attorney approximately three months after the filing date. The remaining process, as described by the USPTO, is as follows. Once the examining attorney approves the mark, it is published in the Official Gazette, and any party who believes that they may be damaged by the registration of the mark has thirty days from the publication date to file either an opposition to the registration or to request time to oppose. If there is no opposition and the mark is based on use, the USPTO will register the mark and issue a registration certificate about twelve weeks after the date the mark was published. If the registration is based on the intent to use the mark in commerce and no opposition is filed, the USPTO will issue an allowance in about twelve weeks, and the applicant then has six months to use the mark in commerce and submit a Statement of Use. Within approximately two months after the Statement of Use is approved, the USPTO issues a registration of the mark. Given the process and time frames involved, I doubt that the Union’s application has been approved and the mark is registered at this time. If it is, the Union should be able to produce a registration certificate.
Businesses frequently make the claim that they register marks to protect their customers, but it is really the bottom line which is being protected. Most consumers are savvy enough to realize the difference between officially licensed and non-licensed merchandise and understand the trade-offs. Restriction of the use of marks frequently leads to less consumer choice and higher prices. This registration application is particularly disturbing in that it claims a trademark for “entertainment in the nature of soccer games.” This is a very broad category indeed. In this case, the mark registration has the potential to damage the relationship between the club and its supporters, other fans, third party vendors, and other clubs.
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