When you’re starting a professional sports team, there are a number of things you need. Three of the more important ones are: An actual team, a place to play, and […]
When you’re starting a professional sports team, there are a number of things you need. Three of the more important ones are: An actual team, a place to play, and a name. At the moment Dan Gilbert, Tom Gores and the Ford Family’s (GGF, we’ll call them) prospective Detroit’s MLS franchise only has one of those.
The first one (a team) is at the whim of MLS (unless GGF want to join USL or a lower division). Despite being named as a finalist for a MLS expansion side (for…reasons), there hasn’t been much indication they’re going to win a slot. The second one (a place) they have locked up, though most considered the decision to move from building a soccer stadium, to simply moving to (totally enclosed) Ford Field a bait-and-switch. MLS was nonplussed about that announcement.
So maybe the potential team could get a leg-up with a kick-ass name, right? Well, they (Gore and Gilbert at the time) came up with one, applying for a trademark under the name…Detroit City Soccer Club (DCSC).
Well, seems a bit tame to me, but that ended up being the least of their problems. See, there is another team playing in the area called Detroit City Football Club (DCFC). If you’re a soccer fan and pay attention to lower-division soccer at all, you’ve at least heard of them. Semi-pro team. Pretty large fanbase for that level. A strong dislike for MLS.
So when GGF was going through the expansion process, they decided it was time to get a name on the books. So in July 2017, they attempted to trademark DCSC.
Unfortunately, they ran into some problems when a letter protesting the trademark application was filed, which then set an investigation in motion.
You see, apparently someone associated with the in-existence Football Club in Detroit had some concerns about prospective Soccer Club in Detroit. For some reason, concerns were raised about the two names being quite similar, and thus confusing to soccer fans in the area. And so, the investigation began…
…and ended quite quickly. Because on October 10, 2017, the folks over at the Trademark office came back with a ruling which denied the application by GGF for a number of reasons. Let’s go through them:
“Marks” is just another word for “name” basically in this context. In this case, the name of the organization. We’ve got Detroit City FC in existence right now, with GGF trying to trademark Detroit City SC. Right off the bat GGF have got issues. The investigator explains the analysis pretty well.
So when doing the analysis, you have compare the entire names, though one aspect of the name may be more significant, and in that context, you’re probably looking to compare the first grouping of words. Here, that’s: Detroit City.
Yeah, that’s a problem. They’re identical. Now GGF says, “hey, that’s only the first part; they’re ‘football club’ and we’re ‘soccer club.'” It’s a nice try, but the investigator isn’t buying it.
The bottom line here is that “football” and “soccer” are generic terms describing what the respective “teams” are providing, and thus don’t carry as much weight in the analysis. Therefore, you move to the primary wording, “Detroit City.” And since they’re obviously similar (identical), GGF doesn’t survive the analysis. And there is nothing else to help a consumer differentiate one from the other.
Similarities of Goods and Services:
You can probably already see where this is going, but if GGF didn’t prevail on the similarities of the marks, they are going to have a rough time distinguishing here, for one reason: They’re both purported to be organizations playing the same sport.
I mean, do I really have to do any analysis here? The argument ticks all of the boxes: Same goods/services being offered by both competitors and identical names leading to the likelihood of confusion by consumers in the market place. There is a reason this didn’t take very long to decide.
Of course, GGF decided to appeal the ruling. In the meantime, they didn’t help their case, with their design firm, let’s call it, “misappropriating” Detroit City FC’s image in some renderings. Oops; simple mistake, I’m sure.
Beyond that, the appeal from GGF seemed to centers around the fact that Detroit City doesn’t actually refer to the “City of Detroit,” and can therefore mean many different things. In support of this, GGF supplies a copy of a…Wikipedia page.
Incredible. Even more so is that when GGF got their response denying the trademark application, there were even *more* reasons supplied by the investigator as to why they were refusing the trademark.
You can read the entire decision here, but I’ll summarize what the examiner had to say about GGF’s argument:
So now, GGF has six months to take another shot at this. I’m not sure why they’d waste the money, but hey, they’ve got plenty of it to blow I suppose. And hey, McDowell’s fought McDonald’s for years. This should be the end of the saga, but as we know, MLS doesn’t go down without a fight.