Weekly IP Buzz for the week ending August 16, 2019

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending August 16, 2019.

Gatorade Prevails on Sports Fuel Slogan Use in Trademark Infringement Suit

Since the introduction of the European Union’s (“EU”) General Data Protection Regulation (“GDPR”),

A three-judge panel of the 7th Circuit Court of Appeals recently ruled that Gatorade’s use of “sports fuel” was not an infringement of another company’s mark.

In handing down the judgment, the court held that Gatorade’s use of “sports fuel” was protected under fair use because Gatorade was using the slogan as a means of describing the company’s wide variety of products and not solely as an identifier of the source of goods.

Court Finds “Sports Fuel” Use in Advertising Considered Descriptive

In 2016, the original suit against Gatorade was filed by SportFuel, Inc. (“SportFuel), which had registered the mark “SPORTFUEL”.  Although both Gatorade and SportFuel operate in the same channels of business, which revolves around hydration drinks marketed toward athletes, the court still held that the mere factor that Gatorade and SportFuel operate in the same field, marketing similar products, does not demonstrate that Gatorade had infringed upon SportFuel’s mark when it used the words “sports fuel” in its advertising.

In fact, the court instead found that Gatorade’s use of sports fuel in its own marketing and business practices fell under protected use because it qualified as fair use.  Specifically, the court stated that Gatorade’s use of sports fuel was both in good faith and simply used in a descriptive sense.

Read the full article here.

Philadelphia Bar, The Jacks NYB, Seeks Play Gloria! Trademark Rights

A Philadelphia bar is seeking to trademark ‘PLAY GLORIA’ and use it in connection with the sale of apparel and merchandise emblazoned with the mark, claiming first use and creation of the connection of use with the mark in support of the St. Louis Blues, a hockey team that used Laura Branigan’s 1982 song “Gloria” throughout their Stanley Cup championship series.

The Use of “Play Gloria” as a Trademark

While it is relatively common for sports teams to use songs as rallying cries for their fans, the question of who used it first, the team or the fans, can often become muddled.  Moreover, because the sports teams naturally have more resources at their disposal, including but not limited to, legal teams, press divisions, and merchandise manufacturers, fans may often back down from claiming first use or credit for the popularity of the song’s use in connection with any particular sports team.

As the Blues have used the song “Gloria” as both their rally song and postgame victory song, the phrase “Play Gloria” has been printed on all sorts of fan merchandise.  Not only have the Blues sold their own apparel with the phrase “Play Gloria” on it, but several other third parties also sell t-shirts, hats, and other similar sports paraphernalia with the phrase printed on it.  

The Jacks NYB Claims First Trademark Rights in Play Gloria

The Philadelphia bar, The Jacks NYB, has claimed rights of first use and filed trademark applications to register the marks “PLAY GLORIA” and “PLAY GLORIA!” in order to assert exclusive rights to use the mark in connection with the sale of fan apparel.  

Find the full article here.

Click to read the previous Weekly IP Buzz on Thriving Attorney.

For more posts, see our Intellectual Property Law Blog.

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Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and transactional law firm located in Dallas, Texas. He also co-founded Project K, a charitable movement devoted to changing the world one random act of kindness at a time, and publishes Thriving Attorney, a blog dedicated to exploring the business of the practice of law, productivity and performance for attorneys, and other topics such as law firm leadership and management, law firm culture, and business development for attorneys.

Click to learn more about Darin M. Klemchuk's law practice as an intellectual property lawyer.