One of the first things an enterprise must decide upon is its name. Nevertheless, the act of assigning names to grocery stores, laundromats, supermarkets, pharmaceutical firms, hi-tech enterprises, or anything else is fraught with ironies. The ultimate irony is illustrated in Shakespeare’s classic, “Romeo and Juliet,” where the main characters’ warring families are locked in a deadly conflict. In a well-known line, Juliet speaks to Romeo about the insignificance of his family name in the larger scheme of things. “What’s in a name” she asks Romeo, after all “that which we call a rose, by any other name would smell as sweet.”
Perhaps Juliet, who was deeply involved in a love affair with Romeo amidst a death struggle between their two feuding families, can see things more clearly than we. But in our mundane little world of marketing, manufacturing, domain names, branding, high finance, and commercial law, names mean a great deal. In fact the significance of brand names is so profound, that we have an entire area of law devoted to their protection, the law of trademarks.
As aspiring entrepreneurs, our goal is to make our brand synonymous with the product we are marketing. If “Kleenex” is your brand, you would be delighted if all persons who wish to blow their nose ask for a “Kleenex” tissue. Likewise Xerox executives are ecstatic when bosses worldwide who wish to make photocopies ask their subordinates to make “Xerox’s” of original documents. Certainly individuals connected with the Thermos Company are happy when persons who wish to keep their liquids hot or cold request “Thermos Bottles.” One would think that one major company is very pleased when Internet surfers “Google” the phrase they desire to find.
This would all be happy news for sellers of such products and services, except for one major pitfall, and thus our second irony. Once a brand name becomes generic, the owner loses its trademark rights. To put it more succinctly once the brand becomes confused with the product, any competitor may use the trademarked name. However, as the old slogan goes, “we should all have such troubles.”
Another way to lose your trademark is by disuse. In 1958, despite a well of tears, the Brooklyn Dodgers National League Baseball Franchise closed its doors at Ebbets Field and left Flatbush forever, for wider vistas of the west coast. As most New Yorkers know, Brooklyn never really recovered from its loss. The anger of Brooklyn Dodger fans towards the treachery of the management of its beloved team is palpable even to this day. Through the years the Dodgers contented with their successful franchise on the west coast, maintained a studied indifference to their origins and never looked back.
That indifference could have been fatal. When Major League Baseball awoke from its slumber in the early 1990’s, it began to realize that its trademarks, copyrights, etc. were extremely valuable intellectual property in the sales of its merchandise and baseball paraphernalia. One of Baseball’s hidden and valued properties was the name “Brooklyn Dodgers.” Accordingly both the Los Angeles Dodgers and the league sought to protect their rights.
In 1989 a bar known as “The Brooklyn Dodger” opened in Bay Ridge. The restaurant featured assorted Dodger momentos from a nearly bygone era. Naturally the bar received a cease and desist letter from the hated Los Angeles Dodgers, and wound up in Federal Court in the Eastern District of New York, which sits a baseball’s throw from Borough Hall in the partisan County of Kings. If Los Angeles’s pitch was made by Sandy Koufax it still had no chance in this venue.
The latter day Dodgers ran into Judge Constance Baker Motley, the legendary Federal Judge, who decided that the team had not used the name “Brooklyn Dodgers” in nearly 25 years, and had done nothing to protect its trademarks, and the restaurant/bar establishment had obtained a limited trademark only applying to its business area, and therefore the restaurant could continue to use the name, “The Brooklyn Dodger.” For Brooklyn fans it was like winning a second World Series.
Trademark for “The Brooklyn Dodger” Sports Bar and Restaurant
The lessons for the aspiring entrepreneur are several. First, brand names matter, so trademark your name and protect it by constant use. Second, if a name is trademarked in one industry it may still be available for use in your line of business. Third, in order to protect your trademark you must take merciless measures against offenders no matter how small, otherwise courts may not shield you from loss of your valued trademark on the rationale that you have not taken the necessary steps to defend your rights. Finally do not worry about your name becoming so famously associated with your product that it becomes generic. That is a problem we would all like to have. (In the case of immense popularity there are legal actions that can be taken to avoid loss of trademark rights)
Epilogue — In 1994, according to the US Patent and Trademark Office, the tavern owners abandoned the trademark “The Brooklyn Dodger.” Sometime after the 1993 decision, the Brooklyn Dodger Bar was re-named the “Salty Dog.” In 2006, the Los Angeles Baseball Team obtained additional trademarks for use of its former name. The bar owners may have found that they could make more money in selling rights to intellectual property than they could in mixing drinks. Brooklyn though appears to be thriving. In a more general sense “Brooklyn is still in the league.” Baseball fans should “Google” that phrase.
For further information on trademarks or other legal matters relating to your business, you may leave a message on my web site www.CalGreenberg.com. You can also e-mail me directly at Cal.Greenberg@gmail.com, or call my office at 718-324-7200.
1993 NY Times Article about court decision ruling in favor of “The Brooklyn Dodger” bar.
Text of the 1993 case.
Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd., 817 F. Supp. 1103 (S.D.N.Y. 1993)
Web Article indicating “The Brooklyn Dodger” owners changed the name of the establishment to “The Salty Dog.” The article, showing a photograph of the bar-restaurant, states that “The Salty Dog, 3rd Avenue off Bay Ridge Parkway (75th Street) was once known as the Brooklyn Dodger, but the LA Dodgers brought suit and hence, the name change.” The tavern now has a fire station motif.
In a You Tube video circa 1990, sportscaster Len Berman shows the Dodger Baseball motif inside and outside The Brooklyn Dodger Sports Bar and Restaurant and includes interviews with former players. The video also provides a nostalgic look at Shea Stadium, now also departed.
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