Can you trademark a trophy?

Can you trademark a trophy?

A trademark is something that signals to consumers who manufactured a product.  Traditionally a trademark is a symbol word or short phrase, but a trademark can also be a scent or color.  The defining characteristic of a trademark is the association it creates in the mind of consumers between a product and the producer of a product.  If someone other than the owner of a trademark uses a trademark to brand goods that can be considered trademark infringement. Whether a defendant will be found liable for trademark infringement depends on whether a court finds that there is a likelihood of consumer confusion.  To determine if there is a likelihood of confusion a court will apply a test which consists of several factors. The test can vary between different the circuit courts in the United States but the test factors are all similar to the factors articulated in Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2nd Cir. 1961). The factors of the Polaroid test are 1. The strength of the senior user’s trademark, 2. the similarity of the trademarks, 3. The similarity of the products, 4. The junior user’s intent in adopting the trademark, 5. Evidence of actual confusion, 6. Sophistication of buyers, 7. Quality of the junior user’s products, 8. Likelihood senior user will sell products similar to junior user. If a majority of the factors weigh in favor of the plaintiff, then the court will find that trademark infringement has occurred.

A case which illustrates the National Hockey League, et al v. The Hockey Cup, et al.,  1:18-cv-06597 (S.D.NY 2018). The National Hockey League represents several franchise hockey teams in north america.  The teams in the National Hockey League compete against each other to win the stanley cup each year. The stanley cup is a silver bowl on a pedestal, on which the names of prior winners are inscribed.  The Hockey Cup is a company which produces a drinking glass which is shaped very similar to the stanley cup. The Hockey Cup attempted to register its name as a trademark, the National Hockey League filed an opposed to the registration with the United States Patent and Trademark Office.  In response the Hockey Cup attempted to get twelve of the National Hockey League’s registered trademarks canceled. The National Hockey League responded to the cancelation by filing a trademark infringement lawsuit in the Southern District of New York.

The National Hockey League alleges that The Hockey Cup’s signature product, a drinking glass, infringes on their trademark rights associated with the stanley cup.  The National Hockey League has successfully registered several trademarks which incorporate the stanley cup including trademark 4677429 which consists of a three-dimensional configuration of a trophy with a ridged circular base, that narrows into an open bowl shape with curved lines radiating upward from the base of the bowl. The Hockey Cup’s marketing campaigns frequently refer to the National Hockey League’s stanley cup competition but never claim that their products are produced by the National Hockey League.  But the key point is whether consumers would be confused into thinking that The Hockey Cup’s drinking glass is a product of the National Hockey League. At the time this case was filed the National Hockey League does license the stanley cup to several manufacturers that make three dimensional products, like speakers and crystal miniatures, but it does not license the stanley cup to any drinking glass manufacturers.

The complaint was just filed, the defendant has yet to respond, and the plaintiff makes a strong case.  It is unlikely that this case will settle given that the National Hockey League makes a significant revenue licensing the shape of the stanley cup to other manufacturers and that the stanley cup is so revered by hockey fans.  The outcome of this case will be a good example of the protection that trademark law grants to three dimensional trademarks.

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