Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[youthsportscoach]

Hi, this is my first time coming here, I found it on google, and hopefully some can help or guide me in the right direction.

Here it is,

I am a coach of a girls softball team, the team consists of my daughter and 11 other girls that love to play softball.  We just became a travel team to play better competition and make them better athletes and to prepare for high school and hopefully college.  They are 11 and 12 years old now.  

The problem is this.  One girl that was not asked to join the team after we were already full ( I even found another team for her to play on, but that wasnt good enough) has a now jelous dad.  Dad also has deep pockets and has just filed for a trademark of our youth sports team name (that has been in use for 15 years by others and I am now taking over this age division) and  is threatining to sue me for use of his trademarked name.  I have heard of something called open and continous use, in that because this name has been being used, he cannot do this.  Basicly he is now trying to stop these girls from playing.  Sure we could just change our name and forget about the $5000 we have invested in uniforms, registration fees clothes,equipment bags etc., but if we change our name, if he is allowed to do this, what would stop him from doing it again.  I dont have the deep pockets that he has, I am just a coach donating my time to these young ladies and letting them play a game they love.

Any comments will be greatly appreciated.

Thank You

[Isaac]

So far he has simply filed for the mark.  He may or may not
be successful in getting it, and you would have the opportunity
to oppose his being given the mark.

The question is whether or not it make sense for you to do so.
An attorney advising you would want to discuss what mark you
are using and the history behind its use and the relationship
between the past users of the mark.  Those are details that
you shouldn't post here.

I suppose you could prevent him from trying this again by registering your
new name (at least locally) or by using a name that you license
from someone else and which he cannot register.  But I think the first step
is sorting out whether he really will succeed in registering
the mark is something to do first.

[JimIvey]

Mr. Clark is right, and it wouldn't surprise me to learn that he knows more about this than I do, but I'll add a few points at which a spite registration application is challengeable.

To get a trademark, registered or otherwise, requires actual use of the trademark.  That raises the ante a bit for the dad.  So, it depends a bit how far dad is willing to take this.  It's possible that any attempt by him to actually use the mark would be apparent to you.  In other words, you can take some comfort as long as you don't see him using the marks.  You might even threaten him with violating your trademark (unregistered trademarks are enforceable) if you see such use.

Next, for registration at least, the mark goes to the "senior user" -- who's been using the mark the longest without abandoning it.  But, early in the registration process, that depends on the examiner finding your prior use.

You get your opportunity to stop registration at an opposition.  Eventually, (assuming things go well for the dad) his application will be published and a period for public opposition is opened up.  I have no idea how difficult (i.e., expensive) it is to file an opposition, but it sounds like that might be an end to the whole matter.

There's another thread here that goes into detail about all the pitfalls of using trademark registration as a tool for extortion:

http://www.intelproplaw.com/Forum/Forum.cgi?board=trademark;action=display;num=1088739907

Another thing to consider is that the season will be long over before his application will mature into any rights that could be enforced in any court.  So, you might tell him that you're more than happy to consider his trademark issue when he can produce proof of registration.  Then, next season, use a different name.  Game over for dad.

From the scenario you've given, calling dad's bluff might not be a bad course of action.  Of course, that would require hearing threats and such for a while.  Another option would be to let the privileged daughter join the team to warm your bench and field fly balls periodically.

Good luck!

[JSonnabend]

If this matter gets as far as publication for opposition, call me.  If you're on the up-and-up in your characterization of the facts, I'll handle the matter pro-bono.

If you want to fire me the TM information by email, I'll monitor it for publication in my system.

- Jeff