A Chat About Professional Sports Trademark Disputes

If you’re a fan of both sports logos and trademark disputes has this ever been the month for you.

No fewer than two trademark disputes involving major league sports teams came to light during the first half of December. The NHL’s shiny new Vegas Golden Knights had their trademark “refused” by the United States Patent and Trademark Office for appearing too similar to that of a college in upstate New York (more on that here), meanwhile the popular German beverage producer Jägermeister went after the Milwaukee Bucks hard just a few days later claiming the team is deliberately trying to harm their brand and filed their protest to the USPTO. Yep.

With these recent events still unresolved we had a chat with former NBA creative director Thomas O’Grady about some of the problems which may creep up when it comes to trademarking a name and how they can be resolved. O’Grady started out as the NBA’s first art director in 1990 eventually working his way up to the creative department’s senior vice president’s chair before leaving the league in 2003 to found marketing, branding and video production agency Gameplan Creative.

Tom O'Grady, Gameplan Creative — Tom O’Grady, Gameplan Creative

Here’s a look at some fascinating behind-the-scenes stories when it comes to developing a brand and dealing with trademark issues at the biggest of stages from our chat with Mr. O’Grady:

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On whether the NBA ever experienced an issue, during his tenure, similar to the Golden Knights or Bucks:

I was fortunate to have not encountered any trademark issues like the Golden Knights. NBA Commissioner David Stern recruited talented, knowledgeable attorneys to deal with such potential issues. Our NBA Creative Services team went through a detailed step-by-step process when developing a new identity (NBA, WNBA and NBDL) or when we were refreshing existing identities. However, the background stories of the expansion Vancouver Grizzlies and expansion Charlotte Bobcats were similar to Vegas in some aspects.

The Vancouver Grizzlies had to be named, designed and launched in a highly compressed window in 1994 since the team ownership was granted the franchise months later than their Canadian neighbours, the Toronto Raptors. This rushed timeline meant that team names, logos, and the ability to do conduct standard legal filings and clearances would be rushed. Our NBA League, NBA Creative Services, and the Vancouver expansion ownership had to work closely in sync and in every aspect of creative and legal clearances to ensure an issue like the Golden Knights would not unfold.

At the advice of the NBA Legal Dept., we were advised to provide names that were more “common” than they were “unique”. The reason was that a name like “GRIZZLIES” was used by dozens of high school and college teams. This makes trademarking actually easier since there is clear evidence that record multiple teams with the same name can “co-exist” in a category; and the same held true with the Charlotte Bobcats. The Bobcats worked its final three names to BOBCATS, DRAGONS, and FLIGHT. Bobcats and Dragons, just like GRIZZLIES were names used by many different teams and entities, which makes clearances smoother since again there is ample evidence that these properties (entities) have been able to “co-exist”. FLIGHT was actually “clean” since it’s very unusual for a sports property.

On the process behind making sure such an issue would never happen:

When a potential trademark/copyright infringement issue arose, the NBA Legal Group would examine the claim from the complainant’s attorneys and ascertain whether their claims might be warranted. Part of that process would include reviewing the initial sketches and speaking with our creatives to better understand how we arrived at the final direction. Some of this was to ensure we didn’t intentionally or accidentally copy or reference another similar mark. While it sounds unethical, sometimes creative look and feel would be used as inspiration via a font, a stylization or colour palette which would cast doubt on the true intent. But at the NBA, we never ran into an issue surrounding a straight copy of another creative’s work.

In the case of the Golden Knights, I am a bit surprised the issue has come to light because it appears the NHL had done all the proper clearances. The Clarkson University Golden Knights is a good example of the due diligence it appears the NHL pursued. Clarkson University in northern New York has a Division I hockey team nicknamed the Golden Knights. The school has not trademarked the name, and Kelly Chezum, vice president for external relations, said the college entered into a peaceful coexistent agreement with the owner of the new NHL team in Las Vegas earlier this year. Chezum said she knew there was a possibility of questions regarding the nickname and took a proactive stance.

The biggest issue is with the Golden Knights here is the U.S. Patent and Trademark Office (USPTO), which disseminated an Office Action on December 7 denying the team’s application to register the mark “Vegas Golden Knights.” Which means, even if the Vegas Golden Knights can work out agreements (throw money at the problem) with other properties such as Clarkson University, without true protection, Vegas can’t prevent others from using their names and marks which dilutes the value of their brand. Bad idea.

And finally, a great anecdote on trying to develop a new mark for the Dallas Mavericks in the late 1990s

In 1997, the NBA Creative Services group worked with NIKE TEAM SPORTS to create an entirely new logo and uniform identity for the team. The Mavericks were owned at the time by Ross Perot, Jr. and he wanted to put his own stamp on the club/organization which for years had been associated been associated with the previous owner, Donald Carter and the cowboy hat on the M primary mark. We collaborated on a new logo which featured a 3/4 quarter profile horse head inset within a western style crested shape and a small star along the top of the logo… simple lines, sleek, fast. Very cool. We went down to Dallas to present to the new owner and their ownership fell in love with the design and the overall identity.

What was not known to the NBA was that at the same time NIKE TEAM SPORTS was working on the new (at the time) Denver Broncos logo, the side profile horse head with the flames and “hidden swoosh nostrils” that you see today.

The NBA was caught off-guard when the new Broncos logo was launched. Some minor aspects of the new work-in-progress Mavericks logo resembled the new Broncos logo. The issue for the NBA was that the Perot Ownership Group saw the new BRONCOS logo and felt like their new logo design might not clear trademark clearances or at least they would look like “me too, Mavericks” since the BRONCOS logo came first.

The logo in question was sent to the trademark office in Washington DC and after a first search came back what the NBA lawyers called “a clean search” which meant the Mavericks and the BRONCOS logos could “co-exist” in the key categories of licensed products. Commissioner Stern was still very disappointed that the MAVERICKS were feeling like they would be unveiling a copy cat identity and asked NIKE TEAM SPORTS to make more refinements and adjustments (at their own costs) to move the new DALLAS logo further away from the BRONCOS.

Once those changes were completed to Stern’s and the Perot Organization’s satisfaction, Commissioner Stern sent the logo over to the NFL Offices to the attention of then NFL Commissioner Paul Tagliabue. Stern shared the entire background story with Tagliabue and asked the NFL attorneys to scrutinized the new logo to make 100% sure there would be no issues with brand confusion or trademark opposition moving forward.

The NFL did their due diligence as a favour to the NBA and to Commissioner Stern, and after reviewing the filings they concluded that they would have no concerns with the new MAVERICKS logo. However, Commissioner Tagliabue had one more person to run the new MAVERICKS logo past and that was DENVER BRONCOS team owner Pat Bowlen. When Bowlen saw the new MAVERICKS logo he thought it was in fact too close to the BRONCOS logo and that he was not going to allow the NBA to move forward without some possible legal action taken. At this point, Taglibue went back to Stern and told him that he believed he could convince Bowlen to soften his stance but he might need a season long launch delay to provide enough time to let the BRONCOS logo have it time to feel “new” to the marketplace.

In 1999, rumours began to circulate that the MAVERICKS were up for sale and to hold on any further work on the new identity, finally in 2000 Mark Cuban purchased the DALLAS MAVERICKS and a new logo (the one they still use today) was created by a local Dallas graphic design firm, Propel Group.

Wow, what a story. I’d love to get a look at that original Mavs logo they were considering.

I’d like to thank Tom for taking time out to chat with us about this topic and we encourage you to check out Gameplan Creative here.