Chicago Cubs, Washington Nationals Challenge WNBA Trademark Application For ‘The W’
The Chicago Cubs and Washington Nationals are challenging the WNBA’s attempt to register a trademark for ‘The W,’ arguing that the league’s mark is too similar to trademarks already used by the two Major League Baseball teams.
The Cubs and Nationals filed a joint opposition to the WNBA’s trademark application on August 10. The WNBA is seeking federal trademark protection for ‘The W’ in connection with sports jerseys and other clothing items.
Both MLB teams have long used stylized ‘W’ logos on apparel and merchandise. The Nationals’ curly ‘W’ is one of the franchise’s primary logos, while the Cubs have also used a ‘W’ design in connection with the team and its merchandise.
Washington Nationals & Chicago Cubs ‘W’ Logos
According to the opposition, the teams claim their rights in their respective ‘W’ trademarks predate the WNBA’s application.
The Cubs and Nationals argue that ‘The W’ so resembles their existing marks that consumers could mistakenly believe clothing bearing the WNBA mark is affiliated with, sponsored by, or otherwise connected to one of the MLB teams.
The filing sets up an unusual trademark dispute between major sports organizations over one of the simplest possible marks: the letter W.
Do the MLB teams have a good case?
On its face, I think this opposition looks like an overreach by the MLB teams.
To prevail, the Cubs and Nationals would ultimately need to establish that consumers are likely to be confused by the WNBA’s use of ‘The W’ and believe there is some connection between WNBA merchandise and either baseball team.
I think that could be a difficult argument to make.
For starters, the WNBA isn’t attempting to register simply the letter ‘W.’ Its application is for ‘The W.’
That distinction matters.
When the trademarks at issue are already relatively simple, particularly single letters and logo designs, relatively small differences between the marks can become important. Here, the addition of the word ‘The,’ combined with the WNBA’s distinct branding and the context in which the mark is used, could help distinguish ‘The W’ from the Cubs’ and Nationals’ respective W logos.
There is another potentially significant problem for the MLB teams: They are hardly alone in claiming trademark rights involving the letter ‘W.’
A review of the US Patent and Trademark Office database reveals hundreds of registrations involving ‘W’ marks covering clothing in International Class 25.
A Search of the USPTO Database for ‘W’ Trademarks Covering Clothing
That crowded trademark landscape could become important if this case is fully litigated.
Trademark owners generally have a more difficult time claiming broad rights in a mark when numerous similar marks already coexist for similar goods. Put another way, if consumers are already accustomed to seeing many different ‘W’ trademarks used on clothing, the Cubs and Nationals may have difficulty arguing that consumers will assume another ‘W-based’ mark necessarily has something to do with them.
Of course, sports merchandising adds another wrinkle. Professional sports teams have extensive licensing programs, and consumers regularly encounter collaborations and cross-branded merchandise. That gives the MLB teams at least an argument that consumers could perceive an affiliation where none exists.
I still think the WNBA would have a strong defense if this dispute went all the way through trial.
That said, the more likely outcome is considerably less dramatic.
I would expect the parties to eventually negotiate a coexistence agreement. The WNBA could, for example, agree to certain limitations on how ‘The W’ appears on merchandise or how its apparel is marketed, potentially making it clear that the goods are specifically associated with women’s professional basketball.
What is somewhat surprising is that these sophisticated professional sports organizations weren’t able to reach that type of agreement before an opposition needed to be filed.
For now, however, that’s where things stand: The Chicago Cubs and Washington Nationals are formally opposing the WNBA’s attempt to federally register ‘The W’ for apparel.
And unless the parties reach an agreement, the question of just how much of the letter ‘W’ any one sports organization can own may now be litigated before the USPTO.
Josh Gerben, Esq.
Josh Gerben, Esq. is a nationally recognized trademark attorney and the founder of Gerben IP. Since launching the firm in 2008, he has overseen the registration of over 10,000 trademarks and handled over 1,500 trademark disputes. Josh's practice focuses on building and defending global trademark portfolios for clients. These clients include entrepreneurs, private equity-backed businesses, athletes, celebrities, and public companies. Frequently quoted by major media outlets like CNBC, CNN, The New York Times, and The Wall Street Journal, Josh is widely regarded as a leading authority in trademark law.
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