Rarely do you see two opposing teams in Major League Baseball working together, but the Boston Red Sox and the Chicago White Sox have teamed up to petition for the cancellation of a trademark filed with the United States Patent and Trademark Office.
Both teams believe that they will be damaged by the continued registration of the mark BARRE SOX in International Class 25 for “sports and fitness apparel, namely, hats, t-shirts, and Jerseys.” The BARRE SOX mark was registered on April 9, 2013, which shows that even with a trademark registration, there is still a chance you will have to deal with others with similar marks down the road.
According to the Trademark Trial and Appeal Board Manual of Procedure (TBMP), a cancellation proceeding is a proceeding in which the plaintiff seeks to cancel an existing registration of a trademark. The proceeding may only be filed after the issuance of the registration. A petition for cancellation may be filed by “any person who believes that he is or will be damaged by the registration of the mark.”
In this case, the Boston and Chicago organizations both point to their longstanding use of their respective marks for identical goods/services and each offer a long list of registered trademarks they each maintain. The extensive sales and promotion of goods and services associated with each mark has enabled both organizations to build “highly valuable goodwill in SOX marks, and said goodwill has become closely and uniquely identified and associated with Petitioners.”
Boston & Chicago argue that the word “Barre” is a geographic designation, just as Boston and Chicago are for their respective marks. By making this argument, they put more weight on the importance of the SOX mark. As a result, it is claimed that it is likely “to cause confusion, to cause mistake, and to deceive the trade and public, who are likely to believe that Registrant’s goods have their origin with Petitioners and/or that such goods are approved, endorsed or sponsored by Petitioners.”
It’ll be interesting to see how this one plays out.
You can read the whole pleading here.
