Time to drop the puck on one wacky trademark dispute. The NHL filed a suit this week against several small companies including The Hockey Cup, LLC; ABC Stein, LLC; A&R Collectibles, Inc.; and an individual named Roger S. Dewey alleging claims of trademark infringement and dilution, false association and false designation of origin, copyright infringement, and unfair competition. Specifically, the NHL filed suit in an attempt to protect its coveted STANLEY CUP family of marks, all of which have been registered in connection with a wide variety of products and services including metal trophies, rings and accessories made of metal, clothing, entertainment services, and more.
The complaint filed on Monday in the U.S. District Court for the Southern District of New York asserts that these businesses are attempting to “free-ride on the fame, goodwill, and commercial value of the National Hockey League and its Member Clubs” in its marketing and sale of infringing Stanley Cup beer steins and counterfeit jerseys.
The beer stein in question is a glass rendition of the original Stanley cup. To add to the experience, the beer stein is sold in a trophy case that looks almost identical to the real Stanley Cup’s case. The NHL presented evidence in its complaint asserting that the defendants’ marketing materials contain numerous false and misleading indications that the beer stein in question is actually an officially licensed NHL product. While the NHL is not explicitly referred-to in any of the marketing materials, the defendants continuously refer to their stein as “The Cup,” refer to the tradition of the NHL champions in “hoisting the cup” overhead, and utilize the timing of NHL games in order to market and advertise the stein.
The defendants in this case didn’t stop at the manufacturing and marketing of an infringing Stanley Cup beer stein. Much to the distaste of the NHL, the defendants (operating under The Hockey Cup, LLC) also attempted to obtain trademark registrations for two THE CUP HOCKEY marks.
The NHL states in its complaint that the Stanley Cup is often referred to and well-known by fans as “The Cup” and The Hockey Cup’s attempt to register and usurp ownership of the STANLEY CUP likeness as well as a similar trademark could have an adverse effect on the NHL’s merchandise and sales market. In an attempt to protect its intellectual property rights, the NHL filed oppositions against registration of the family of THE CUP marks through the USPTO before filing the lawsuit in question.
The Hockey Cup, however, criticized the opposition, stating that the filing by the NHL “included a verbose introduction laden with unfounded accusations, none of which require a response.” In fact, The Hockey Cup went so far as to not only criticize the substance of the filing, but to seek cancellation of all twelve of the federal STANLEY CUP word and design mark registrations owned by the NHL.
Interestingly, The Hockey Cup requested cancellation of the STANLEY CUP marks owned by the NHL on the creative grounds that the creation and ownership of the Stanley Cup arose not from the NHL, but from Lord Stanley of Canada.
According to The Hockey Cup, Lord Stanley was a Governor General of Canada who commissioned the creation of what became the Stanley Cup in 1892. The ownership of the Stanley Cup, therefore, was established by a trust that Lord Stanley originally created. Therefore, The Hockey Cup stated, it believes that the people of Canada are the true owners of the Stanley Cup– not the NHL.
In a legal sense, The Hockey Cup argued that the NHL’s STANLEY CUP marks should be cancelled on the basis that the NHL obtained the STANLEY CUP marks on grounds of fraud, genericness, and “the doctrine of unclean hands.” Essentially, The Hockey Cup’s argument is based on allegations that the NHL never should have been able to register the STANLEY CUP marks in the first place because it doesn’t have ownership of the Stanley Cup – the trustees (the people of Canada) actually do.
The situation with this opposition in the USPTO obviously added fuel to the fire. In addition to its claim regarding the infringing Stanley Cup beer stein, the NHL requested that the court deny registration and cancel the THE CUP trademark applications that The Hockey Cup, LLC filed.
The NHL doesn’t stop there. The complaint spans over forty pages, making a constant and vigilant effort to express to the court its struggle with stopping the infringing conduct of the defendants. In addition to evidence of infringement when it comes to the Stanley Cup beer stein and the applications for THE CUP marks by The Hockey Cup, LLC, the NHL also expressed concerns about several counterfeit jerseys sold by the defendants, which appear to be different and of a lesser-quality than the officially licensed merchandise.
At first, I thought this case was just another rudimentary step by the NHL to protect its intellectual property rights to the likeness and use of the Stanley Cup. Upon further investigation, however, this case appears to be a bumpy ride with plenty of interesting filings and some wild claims that I definitely didn’t think I would see today upon waking up for work this morning. The defendants in this case seem to have been pretty adamant so far in standing their ground, so it will be interesting to see this case go forward.
Author, Caroline Womack, is a rising 3L at Quinnipiac University School of Law and primarily studies intellectual property law, focusing on video game and internet law.