Tuesday, November 9, 2010

LA Dodgers and Brooklyn Burgers

More than 50 years ago, the Dodgers left Brooklyn but, accordiing to a recent Notice of Opposition that Los Angeles Dodgers LLC filed in the U.S. Patent and Trademark Office, the team still wants to keep the city's name. The controversy began in June of 2009 when a Brooklyn-based meat supplier, A. Stein Meat Products, Inc., applied for a logo for its Brooklyn Burger hamburger patties. Now the LA Dodgers team, which has marketed Brooklyn Dodgers memorabilia and novelty items and maintains several trademark registrations for Brooklyn Dodgers marks, argues that the logo will lead consumers to believe that the meat products are associated with the old Brooklyn Dodgers baseball team.

The Dodgers have been protecting their rights to the Brooklyn Dodgers marks since the 1980s when they argued that the logo for The Brooklyn Dodger, a Brooklyn restaurant, was confusingly similar to the baseball team’s marks. In Major League Baseball v. Sed Non Olet Denarius, 817 F. Supp. 1103, Judge Constance Baker Motley found that the Los Angeles Dodgers made no effort for a quarter-century to protect the Brooklyn name, and added that the Brooklyn bar owners had promptly told the Califonia club they were using the name. Judge Baker's ruling was later vacated pursuant to a settlement. For more, see Howard W. Brill, Name of the Departed Team: Who Can Use It, 15 Whittier L. Rev. 1003 (1994) available in HeinOnline.

A. Stein's website says it will use the Brooklyn Burger logo on apparel including hats and polo shirts, and that Brooklyn Burger is the “official burger enjoyed by fans” at stadiums hosting the Brooklyn Cyclones, the New York Mets, and the New Jersey Nets. A. Stein’s answer is due December 4, 2010. Likely issues in the proceeding will be whether the Dodgers actually used their marks continuously and whether baseball apparel, beverage containers, printed matter and novelty items have anything to do with burger patties.

A Legal Strategist's Guide to Trademark and Appeal Board Practice edited by Jonathan Hudis (Call #KF3193 .L44 2010) is on reserve in the Brooklyn Law School Library collection. The publisher, American Bar Association. Section of Intellectual Property Law, describes it as an essential resource for every trademark practitioner's library. It has an analysis of each facet of Board practice, including: inter partes proceedings (such as Oppositions, Cancellations, and Concurrent Use Proceedings); ex parte appeals to the Board from refusals to register marks; disclosures and discovery; motion practice; presenting one's evidence at trial; the use of experts; briefs on final hearing and oral argument; appeals from final Trademark Trial and Appeal Board decisions; settlement, alternative dispute resolution, and accelerated case resolution; and ethical issues when practicing before the Board.

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