Shortly after California Chrome won the Preakness Stakes, the second leg of horse racing’s coveted and elusive Triple Crown, news emerged that the horse’s owners had filed to register the name as a trademark with the United States Patent & Trademark Office. In fact, they had made the filing on May 15th – before California Chrome had even won the second race. The timing of the trademark filing illustrates not fortuitous or circumstantial timing on the owners’ part, but rather an understanding of the requirements of the registration process – and knowing that it doesn’t happen overnight. There are a couple of interesting aspects to the idea of trademarking the name of an animal. Let’s look further.
The first thing to understand is what, exactly, California Chrome’s owners are seeking to protect with a trademark filing. Remember that trademark protection covers the use of a name of distinctive mark as it relates to the specific goods and/or services claimed in a trademark application. In this case the owners aren’t trying to protect the horse’s name as it relates to a race horse – although they could have. Instead, the owners have filed to protect the use of the name California Chrome on merchandise – on athletic apparel like shirts, pants, jackets, shoes, and hats. The presumption here is that there would probably be a large market for these goods should the horse win the Belmont and thus, the Triple Crown.
California Chrome’s owners are rightfully and understandably trying to prevent anyone else from cashing in – off the track – on their success on it. In practice, that means that any merchants or outlets found selling “bootleg” merchandise – unauthorized or unlicensed apparel like the kind you might see in a sporting arena parking lot after the game – can be ordered to stop, and sued for damages if necessary.
If you’re familiar with the trademark process, you might say to yourself, “Wait a minute, trademarks filings can take almost a year for approval. Won’t that be long after the Belmont?” But remember – you can establish and protect a trademark before it’s officially registered with the USPTO. A trademark is generally afforded protection from the date on which it is filed with the USPTO. Therefore, once the trademark is registered, the rights are retroactive to the filing date.
One interesting wrinkle: there is an automotive accessory company in Kentucky that already owns the trademark “California Chrome” – but only in reference to a set of chrome wheel covers that it sells. Trademarks are intended to prevent consumer confusion between similar products and names, which is why you come across different items and companies with the same, or similar brand names – think of Dove Soap and Dove Chocolate, or Apple Inc. computers and the Apple Corps. record label.
Although a claim by the Kentucky company would be difficult, however, it probably wouldn’t be impossible. They might, for instance, cite possible confusion or implication of ownership, affiliation, or endorsement. Or they may decide that there’s little chance of connecting a horse with an auto company. With so many inconclusive facts and gray areas, it’s difficult to predict one way or another how the USPTO might rule in such a claim.
It’s not unprecedented for a racing horse to be trademarked. Big Brown, the horse that won the first two legs of the Triple Crown back in 2008, was trademarked and set up for a huge merchandise and licensing deal. That was another situation where another entity had a claim to the phrase “Big Brown” in other contexts – primarily, in this case, delivery giant UPS. Big Brown’s trademark filing did, however, go through successfully, and remains on the books. Interestingly, the last horse to come close to the Triple Crown, 2012’s I’ll Have Another, was not trademarked, although there was a big merchandising deal in place there, as well.
Although many horses have come close in the more than 35 years since the last Triple Crown winner, Affirmed, those last two horses had particularly disappointing results. Big Brown came up lame almost right at the start and was unable to finish, and I’ll Have Another was pulled from the race the day before. With any luck, California Chrome will at least have a chance this time around.
One final item of note: for naming and trademark purposes, it’s typically recommended to choose a fanciful or unrelated name for your item – and if you’ve ever watched a horse race, you know that fanciful names rule the day. At first glance, “California Chrome” fits that bill. But in reality, it’s closer to the “suggestive” or even “descriptive” naming category – the word “chrome” is actually horse-speak for white markings on a horse’s pelt – something California Chrome has an abundance of. In this case, however, it’s not going to affect the likelihood of the trademark’s approval.