Let’s say you invent a sport. Like Abner Doubleday, who invented baseball. (Editorial note: Abner Doubleday didn’t actually invent baseball.) You give that sport a name. Can you own that name? Can you protect it as a trademark? Let’s take a look at a real-life example—the sport of “Fowling.”
Fowling, as you may have figured out, combines football and bowling. Want to watch fowling in action? Here you go:
According to The Wall Street Jounal, an entrepreneur named Chris Hutt:
…conceived Fowling with friends at a 2001 Indianapolis 500 tailgate party, he said. A football they were tossing accidentally knocked into a rack of pins set up earlier. “That was our Eureka moment.”
Around 2002, Hutt opened up Fowling…lanes?…in a Michigan warehouse. He’s been at it ever since.
The Trademark Process
Hutt has filed several applications with the United States Patent and Trademark Office to register FOWLING as a trademark. Here’s a 2015 application to register it for “sports equipment, namely, balls, wooden gaming platforms specially adapted for use in playing a hybrid football and bowling game used for the placement of upright bowling pins, and upright pins in the nature of bowling pins.”
The application to place FOWLING on the USPTO’s Principal Register of Trademarks was rejected on the grounds that the mark is “merely descriptive,” meaning “it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.”
The USPTO Examining Attorney stated:
…the applicant [Hutt] asserts that registration of the mark is appropriate because the equipment is for a “football bowling pin game” and FOWLING is an inherently distinctive term coined by the applicant in reference to this game. However, while the examining attorney does not dispute that the game was founded by an individual connected to the applicant, the fact that an applicant may be the first or only user of a merely descriptive designation does not necessarily render a word or term incongruous or distinctive. In this case, the evidence shows that FOWLING has become the descriptive name of the game at issue. The fact that the game was invented by the applicant and “fowling” coined as the name of the game is not sufficient to overcome the finding that the mark is merely descriptive…
She attached several media articles which make reference to the game using the name “Fowling,” stating that the articles “…make clear that FOWLING has become the descriptive name of the “football bowling pin game” for which the applicant’s goods are used.” She continued:
Given the common use of “fowling” as the descriptive name of the sport or game for which the applicant’s sports equipment is used, consumers encountering the proposed mark FOWLING used on the goods would perceive it merely as indicating the use or purpose of the goods, and would not view it as a trademark identifying the source of those goods.
What Went Wrong?
It seems that, while Hutt may have invented the game and come up with the “Fowling” name, he failed to protect it at the outset. Instead, he allowed that name to become a common term that refers to the game itself (whether it should be considered descriptive or generic is another question, but that’s outside the scope of this blog post.) I’ll bet that if Hutt could go back in time, he would file a trademark application before he took the game public (or shortly thereafter.)
Maybe Hutt will continue to fight the USPTO’s ruling and will eventually prevail; but even if that happens, it will have been a long and costly process.
The lesson is simple: file your trademark applications sooner, rather than later.