A trademark smackdown is reportedly brewing between World Wrestling Entertainment Inc. and the Philadelphia Wine School over the word “smackdown.” 

Apparently the Wine School has been holding a competition for food and wine pairings since 2007 called “Sommelier Smackdown.”  When they recently went to register the phrase as a trademark the champions of masked men in tights sent a cease-and-desist body slam letter opposing the registration on the grounds that their own “Smackdown” program had been on the air since 1999 and they already owned the word smackdown for entertainment purposes.

It’s hard to believe that someone would confuse wrestlers with wine connoisseurs, not that professional wrestlers couldn’t enjoy a fine glass of wine.  But, let’s face it – we’re more likely to expect the WWE’s Smackdown show to have wrestlers breaking bottles over each others’ heads than consuming them in the name of entertainment. 

Nonetheless, the smackdown case illustrates how the class distinctions matter in trademark law and how the lack of segmentation within classes can lead to head-butting over who has the right to use a certain word or phrase.

Copyright © 2009 Corporate M.O., LLC

“Read this and let me know if they can really do it,” my assistant said as she handed me the front page of the local paper.  The headline: “MLB says kids teams can’t adopt nicknames.”

We’re in the middle of the World Series between the Philadelphia Phillies and the Tampa Bay Rays and the headline makes it sound like the Grinch Stole Christmas.  Kids can’t emulate their heros?  It doesn’t sound fair.

Actually, the headline is a bit misleading.  It says teams can’t adopt nicknames.  When you read the article you realize its really about trademarked names, not nicknames per se.

Part of every professional sports team’s franchise, or marketing platform, is it’s team name and logo.  Those assets are closely guarded and usually trademarked for added legal protection.

Using someone else’s name without their permission is really a form of identity theft.  It causes confusion and misleads others and that’s where the trademark infringement comes in.

Oh, ‘common you might say.  When Al’s Garage sponsors the local youth baseball team and their team jerseys say “Al’s Yankees” everyone knows it’s not the real NY Yankees.  And besides, how can they own the word “Yankees”? 

True.  They know it’s not the world famous NY Yankees — but seeing the word “Yankees” in the context of a baseball uniform makes people think of the NY Yankees and there’s the rub.  It’s very different than, for example, seeing a Yankees Cheese Shop sign.  It’s a different product and, in legal terms, a different class of goods.  When it comes to baseball, the NY Yankees can own that Yankee space.

Most ethical people would not dream of driving someone else’s car or moving into someone else’s home without permission.  Yet when property is not three dimensional, when you can’t pick it up and hold it, when it’s intellectual property like copyright, trademark, and patents; more people are inclined to rationalize use without permission.

Rather than banning use of Major League Baseball team names on pint size jerseys, the MLB might consider offering a limited license for a very nominal license fee — an amount that could be raised in a bake sale.  In the process they would be teaching the kids that stealing a name is not the same as stealing a base. 

They would also hit a home run for legal literacy by reminding players, coaches, and sponsors that the law, like baseball, has rules that need to be followed if you want to stay in the game.