Trademark Disputes: Brooklyn Nets
A sports team effectively cannot function without trademark rights to its name. Without a federal trademark registration, teams would find it much more difficult to fight infringement cases, particularly from imported goods. The result could be reduced revenue from branded merchandise.
This is why the case of the Washington Redskins trademark is so compelling. Owner Dan Snyder has vowed to never change the team name. Perhaps his views would change if he no longer owned the federal trademark rights.
Another team now finds itself involved in a trademark case. The New Jersey Nets moved to Brooklyn in 2012, dubbing themselves the Brooklyn Nets. Ownership went through the proper procedures, securing trademark rights to “BROOKLYN NETS” in advance of the move.
A Louisiana man, however, believes that he holds trademark rights on the name “BROOKLYN NETS”. He has made his case to the U.S. Patent and Trademark Office (USPTO) in the last year, and recently filed suit against the NBA, Bruce Ratner, and former Nets minority owner Jay Z.
Who Is Involved:
The plaintiff, Dr. Francios de Cassagnol, claims use of the mark Brooklyn Nets Entertainment Network as far back as the 1970s. He has filed suit against multiple parties involved with the Brooklyn Nets, including parent company New Jersey Basketball, LLC (now listed as Brooklyn Basketball, LLC), the NBA, developer Bruce Ratner, Barclays Center CEO Bret Yormak, and Shawn “Jay Z” Carter.
What Is The Issue:
Since its move to Brooklyn, the Nets franchise has increased greatly in value. According to Forbes, the franchise is now worth $780 million, fifth most in the NBA, up from $269 million in 2010. Since Dr. de Cassagnol believes that he owns trademark rights to the term “BROOKLYN NETS”, he feels he is entitled to compensation.
What Is the Argument:
Dr. de Cassagnol’s argument centers on his state trademark rights, as evidenced by his 2003 registration in the State of Louisiana. He also filed an affidavit stating that he contacted the NBA as early as 2003 about usage of the “BROOKLYN NETS” trademark.
In addition, Dr. de Cassagnol filed a federal trademark application for “WWW.BROOKLYN-NETS.TV” in 2006. Because of multiple complications in the registration process, the USPTO published his mark for opposition until April 2011. New Jersey Basketball, LLC, however, filed an opposition a few months later.
What Is At Stake:
Given the sharp increase in the franchise value since taking the Brooklyn Nets name, Dr. de Cassognol seeks steep damages. His suit calls for $600 million in damages. He additionally demands that the team cease using his “BROOKLYN NETS” trademark.
Such damages would be devastating to the team and the NBA. Not only is the requested damages amount many times the team’s annual revenue, but the loss of a valuable brand would set the team and league back considerably.
What Was Decided:
While the case is technically still pending, Dr. de Cassognol doesn’t have much of a chance to prevail. The USPTO has already sustained New Jersey Basketball, LLC’s objection to his “WWW.BROOKLYN-NETS.TV” trademark application. It also seems unlikely that consumers would confuse his publishing brand with the NBA team.
The argument of state trademark rights doesn’t necessarily work in Dr. de Cassognol’s favor. The case of Burger King in Mattoon, Illinois presents a comparable scenario. The owners of that Burger King, established before the national chain, had only a state-level trademark on the name. They could not stop the national chain. They could, however, prevent the chain from entering their hometown of Mattoon and a certain radius surrounding it.
Given Dr. de Cassognol’s state trademark registration, he could perhaps prevent the Brooklyn Nets from operating in Louisiana. That would not seem to hurt their brand very much, since they operate in New York.