Property, intangible

a blog about ownership of intellectual property rights and its licensing

Oklahoma City or Seattle Supersonics?

There is some consternation in Seattle. The Seattle Supersonics are moving to Oklahoma City. One news report said “the SuperSonics are headed to Oklahoma City with Bennett leading the way, leaving behind the team name, colors and 41 years of history.” More accurately, another report said a binding agreement would “keeps the SuperSonics’ name, logo and colors available if Seattle gets a replacement franchise.” Nevertheless, the Seattle Trademark Lawyer reported that applications to register the trademark OKLAHOMA CITY SUPERSONICS were filed, albeit expressly abandoned shortly thereafter.

The Memorandum of Understanding between the team and the City of Seattle says specifically that the team “agrees that it will not use the ‘Seattle Sonics/Supersonics’ team name or any logos, symbols, designs, trade dress (including, but not limited to, team colors) or other indicia associated with the Seattle Sonics/Supersonics (the ‘Intellectual Property’) for purposes of identifying its NBA team in game competition, marketing, promotional or other similar purposes following relocation of the team to Oklahoma City . . . .” It also says that if the NBA approves a new team for Seattle, the Oklahoma City team will “transfer at no cost all right, title and interest in the Intellectual Property” to the new owner in Seattle.

Note that the MOU says specifically that the Oklahoma City team may not use “Seattle Sonics/Supersonics,” not “Sonics/Supersonics” or “anything confusingly similar to Seattle Sonics/Supersonics.” As the Seattle Trademark Lawyer points out, using the name OKLAHOMA CITY SUPERSONICS is “predictable,” which is why the MOU could be read to mean exactly what it says – if the intention of the parties was that “Sonics” or “Supersonics” were not to be used at all, the parties would have said so. There’s also no suggestion that the owners of the team were trying to pull a fast one by filing applications; the applications were filed by NBA Properties, Inc. (here and here), the NBA entity that manages trademark registration for all the teams.

Who knows why the agreement was worded so narrowly, or why the applications were filed and then abandoned. It could be that the owners weren’t willing to give up the name and would only agree not to use “Seattle” as part of the name. But abandonment is also a potential concern. The agreement could have been worded this way to ensure that the Supersonics name was not expressly abandoned by the terms of the agreement. This situation is not like the Cleveland Browns‘, where there was a promise for a new Cleveland team before the old team moved to Baltimore, so manifestly an intent to resume use easily defeating an abandonment claim. And putting team spirit aside, isn’t a trademark in use stronger than one that’s not, so wouldn’t Seattle ultimately benefit from the use of SUPERSONICS by Oklahoma City during a period of non-use in Seattle? Couldn’t filing the applications also be merely a defensive move, to forestall a St. Louis Rams situation?

But it’s an interesting law school exercise if the Oklahoma City team was to begin using OKLAHOMA CITY SUPERSONICS, a new SEATTLE SUPERSONICS team is started in Seattle, and Oklahoma City won’t give up its name. Would there be likelihood of confusion at that point? Consumers of professional sports teams goods and services are sophisticated about their teams, wouldn’t they know the difference? Would it depend on how many years it was before Seattle was hosting a new team? Assuming this is the only agreement governing the relationship, could the OKLAHOMA CITY SUPERSONICS claim abandonment of the SEATTLE SUPERSONICS marks and that the resumption of use by Seattle was an infringement of its rights in OKLAHOMA CITY SUPERSONICS (like this previous post)? Is Oklahoma City estopped from claiming abandonment? Or is the agreement evidence of an intent to resume use of the name? Certainly not by the current owners; the team is moving to Oklahoma City, and I’m not aware of any abandonment case that considers what an unrelated party, like the City of Seattle, thinks about the situation.

Would instead the new Seattle team be able to tack on to the OKLAHOMA CITY SUPERSONICS use? There’s no question that formal rights must to be transferred back to Seattle and it appears all the elements for tacking are met, except perhaps the similarity of the marks. Would the Oklahoma City team be the infringer then? It’s all such interesting food for thought.

Litigation over past and potential sports names happens so often that it might be considered a niche area of law. It happened in Baltimore (twice, see also Maryland Stadium Auth. v. Becker, 806 F. Supp. 1236 (D. Md. 1992)), St. Louis, New Jersey (National Football League Properties, Inc. v. New Jersey Giants, 637 F. Supp. 507 (D.N.J. 1986)) and New York (Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd., 817 F. Supp. 1103 (S.D.N.Y. 1993), vacated 859 F. Supp. 80 (S.D.N.Y. 1994)). There’s even been a bill proposed, the Sports Heritage Act of 1996 (S. 1598, 104th Cong. 1996), sparked by the Browns threat to move to Baltimore.

Seattle Trademark Lawyer posts here and here.

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