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Although the PHILLY SPECIAL was a flawlessly executed play, the same cannot be said for the Philadelphia Eagles’ handling of its trademark application for “Philly Special.” For starters, it took the organization 11 days to file for the trademark after the Super Bowl. In that time, there were over 10 other trademark filings for the phrase. Moreover, the application filed by the Eagles contains technical flaws which has jeopardized the validity of the application.
The following is a summary and update (as of late August 2018) of the race to obtain a trademark registration for PHILLY SPECIAL.
Part 1: The Initial Post Super Bowl ‘Philly Special’ Trademark Filings
The Super Bowl took place on February 4th, 2018. By the time the Philadelphia Eagles got around to filing to protect the name “Philly Special” 11 days later, several other “entrepreneurial” individuals and companies beat them to it.
On February 6th, 2018, Joseph G. Tallarico of Pennsylvania filed for THE PHILLY SPECIAL for “sandwiches.” He filed as “in-use” and provided “proof of use” in the form of a (less than convincing) advertisement for a sandwich (see right.)
Tallarico Application Specimen
On June 7th, 2018 the USPTO Examining Attorney issued an initial refusal of Tallarico’s application on the grounds that the mark was “merely geographically descriptive,” had an unacceptable specimen, and more importantly:
Due to the renown of the trick play by the Philadelphia Eagles named the “Philly Special” and the use of the phrase “Philly Special” in the mark, and the fact that there is no information in the application record regarding a connection with applicant, applicant must specify whether the Philadelphia Eagles have any connection with applicant’s goods, and if so, must describe the nature and extent of that connection. See 37 C.F.R. §2.61(b); TMEP §1203.03(c)(i).
Tallarico has not yet responded (but has until December to provide his response or the application will abandon.)
Other trademark applicants include beer company Yuengling for the since-abandoned PHILLY SPECIAL beer trademark application and several filings for clothing items from five different parties, all pre-dating the Eagles filing on February 15, 2018.
Part 2: The USPTO Refusal of the Philadelphia Eagles’ trademark application for PHILLY SPECIAL
On May 15, 2018, the USPTO issued an initial refusal of the Eagles’ ‘PHILLY SPECIAL’ trademark application for two main reasons: (1) the prior-filed applications and (2) the use of the trademark was “merely ornamental.”
a) Reason #1 for refusal: the prior-filed trademark applications
The first reason for refusal the USPTO gave on the Eagles’ application was based on the prior-filed applications mentioned above. In this case, the Eagles will need to monitor the prior-pending applications to ensure none of them successfully register. Presuming that these prior applications are refused for various reasons, then this refusal will be withdrawn.
Gerben Law Firm has written extensively on prior pending applications and, for the most part, this will be a waiting game for the Eagles as each of the pending applications go through the review process. As stated above, each application has a host of issues, the biggest being the “false association” with the Philadelphia Eagles. “False association” is the idea that regular consumers would see the mark and assume it is sponsored by or connected to one source – in this case, the Philadelphia Eagles. The theory would be that consumers are likely to associate the phrase with the Eagles, not with some third-party’s clothing brand.
Another common issue is a specimen problem – in one case (see right), the applicant merely used a label maker to print out PHILLY SPECIAL and applied it to a coffee cup. Another, listed above, used a crude-looking picture of a sandwich.
b) Reason #2 for refusal: incorrect “use” of the trademark
The Examining Attorney also issued an “ornamental use” refusal, stating that the specimen the Eagles submitted did not show PHILLY SPECIAL used on an interior label, hang-tag, or other place consumers would typically look for a trademark. Therefore, the specimen was refused as it merely demonstrated an ornamental use of the phrase, not a “trademark use.”
Not every use of a word or phrase is a trademark. Just because someone might think of a funny phrase or cool design, putting it on a mug or on the front of a t-shirt does not mean that they own a brand.
In order to be considered “trademark use” under U.S. trademark law, a mark must identify the source of the good or service (essentially, the brand). To demonstrate proper trademark use for apparel, the mark must typically be used on the clothing’s interior label, neckline, or hang-tag, as opposed to merely a design on the front of a t-shirt. This establishes the mark as a brand by which the average consumer could identify the provider of the product (i.e., the product’s source).
This error in the Eagles’ trademark filing is surprising given that it is very clear to any experienced trademark attorney that this specimen would not be sufficient to support a registration of the trademark. The team should have filed the application based on an “intent to use” the phrase, and, developed a brand of clothing around the phrase (e.g. using the phrase on tags or labels for a branded line of clothing).
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Even if the Eagles overcome both of these refusals, that still won’t be the end for them. At least one party monitoring this application has filed a complaint with the USPTO called a “Letter of Protest,” arguing that the phrase “Philly Special” is incapable of trademark protection. If this application is ever approved by the Examining Attorney, it is possible that someone will challenge the Eagles during the application’s “opposition phase.”
Then the question would really be, “who does the phrase belong to?” The Eagles? The fans? Needless to say as the NFL season kicks off many will be watching this trademark application (and, of course, their favorite teams) for some exciting action.