Unauthorized Use of WORLD SERIES in Advertising or Promotions?  Strike One, Strike Two … !!

Readers of the Broadcast Law Blog are familiar with the potential trademark claims that may arise from the use of SUPER BOWL® (see here) or FINAL FOUR® in advertising or promotions (see here and here).  I was recently asked, in light of the various “WORLD SERIES OF ____” marks that are being used for sports or activities other than baseball, whether there is a similar risk with using WORLD SERIES® in advertising or promotions during this time of year.

The short answer is yes.

The first use of “World Series” for the US professional sports championship took place in 1903, if not earlier.  However, it was not until 1987 that the Office of the Commissioner of Baseball (“MLB”) began seeking federal registration for “World Series” trademarks.  The applications were based on use of the marks before 1986.  (Use of a trademark without registration can create “common law” marks, which are enforceable, but the owner of the mark does not have the presumptions of ownership and validity that accompany trademarks registered on the Principal Register of the US Patent and Trademark Office.)

Today, MLB owns a number of registered marks for “WORLD SERIES” in words, in a stylized format or with a design.  MLB’s rights in “WORLD SERIES” marks are strong.  Indeed, MLB appears to own all of the registrations for WORLD SERIES-formative marks for goods or services relating to baseball tournaments and merchandise, including COLLEGE WORLD SERIES®, WOMEN’S COLLEGE WORLD SERIES® and HIGH SCHOOL WORLD SERIES®, notwithstanding the fact that those events are run by the NCAA or other sports organizations.  (see here and here).  Although it is probably not obvious to the average fan, MLB owns these marks and licenses the respective trademarks to the actual tournament operators.  The fact that MLB has made these arrangements reflects how seriously MLB takes protecting its WORLD SERIES® mark and how strong those rights are – up to a point.

On the one hand, the Trademark Trial and Appeal Board has found that WORLD SERIES is a famous mark (see here), which typically means that the owner has broad rights in its mark, i.e., it has strong rights against a third-party mark that is similar and/or is being used for related goods and services.  On the other hand, typically, if many are using the same words as part of their trademark, none of the various owners can claim broad rights in their marks.

Here, many other groups use and have rights in marks that are variations on “WORLD SERIES.”  Notably, there are numerous federal registrations and applications for marks that include the phrase, “WORLD SERIES” for non-baseball competitions  (e.g., WORLD SERIES OF POKER®, WORLD SERIES OF FIGHTING®, WORLD SERIES OF CHEERLEADING®, MAH JONGG WORLD SERIES® and WORLD SERIES OF ENTREPRENEURSHIP®) that are not owned by MLB.  However, many of the registrations include the specific phrase “and not relating to baseball or softball or a baseball or softball team, league, mascot, stadium or event” in the description of goods and/or services.  Most likely, this wording was added after MLB sent out a demand letter and/or obtained extensions of time to oppose the applications.

Broadly speaking, it is a fair conclusion that MLB’s right to take action against the commercial use of a “WORLD SERIES” or other MLB mark is limited to goods and services that somehow relate to baseball.

So, what will lead to a cease-and-desist demand from MLB?  MLB has legitimate concerns about unauthorized uses of its trademarks where consumers may be confused into believing that the advertiser is approved by or connected with Major League Baseball because such use may threaten an exclusive license for use of the mark in a particular geographic market, e.g., “The Official Beer of [insert name of your team].”

There are numerous reports of MLB obtaining a court order allowing it to seize counterfeit (unauthorized) goods.  From my own experience, MLB will object to a contest that includes one of its trademarks in its name or offers tickets to a game as part of a prize.  (In fact, this claim was against a media company.)  There are few cases or reported instances where MLB has objected to the use of the WORLD SERIES® mark in advertising or promotions.  Even so, the examples of problematic activity in the SUPER BOWL® or FINAL FOUR® articles generally apply with equal force to the use of the WORLD SERIES® mark.

In addition, MLB and MLB teams own numerous trademarks, including team names, slogans and logos.  MLB teams can also be extremely aggressive against local unauthorized uses of its trademarks and are more likely to become aware of them.  So, all of the foregoing concerns apply to any MLB mark.

Importantly, these concerns apply to commercial uses of MLB’s trademarks.  News organizations, however, have the right to use “World Series” or other MLB marks in reporting on games.

Thus, if a broadcaster or a media company is asked to run ads or is considering a promotion that refers to “WORLD SERIES” or another MLB trademark, which is baseball-themed or relates to baseball in some way, it would be well-advised to consult with a trademark attorney who is experienced with these issues.

Courtesy Broadcast Law Blog