The Chicago Cubs is starting out 2019 with a win, though removed from the ballpark. The Cubs prevailed in a trademark dispute with Grant DePorter, CEO of Harry Caray’s Restaurant Group, after DePorter sought to claim ownership to “#MagicNumber108.” DePorter sought to cash in with the rest in claiming commonly used phrases so that he could force others to pay him for their use. On this occasion, logic prevailed over greed. The trademark examiner and now the Patent and Trademark Office’s Trademark Trial and Appeals Board ruled that the hashtag could not be claimed as a mark. So, for all of my fellow Cubs fans, here is to #MagicNumber108.

DePorter actually claimed that no one used this phrase in everyday life shortly before the Cubs won the World Series in 2016. As a lifetime Cubs fan, I confess my doubts about DePorter’s veracity on this point.

Notably, the court noted:

“The evidence provided by the Examining Attorney shows wide use of the proposed mark in a non-trademark manner to consistently convey information about the Chicago Cubs’ World Series appearance and win after a 108-year drought. This evidence is competent to suggest that upon encountering Applicant’s “mark,” prospective purchasers familiar with such widespread non-trademark use are unlikely to consider it to indicate the source of Applicant’s goods.”

It was even more far fetched of DePorter to argue that a decision against him would “set a dangerous precedent.” The dangerous precedent would be to allow people like DePorter to balkanize our commonly used phrases and terminology into privately owned shares.

We have been discussing a disturbing trend in copyright and trademark claims over things occurring in public or common phrases or terms. (For a prior column, click here). We have often discussed the abusive expansion of copyright and trademark laws. This includes common phrases, symbols, and images being claimed as private property. (here and here and here and here and here and hereand here and here and here and here and here). This included a New York artist claiming that he holds the trademark to symbol π.  Even the Trump legal team sought to trademark “Keep America Great.” 

Section 45 of the Trademark Act, 15 U.S.C. § 1127, as follows:
The term “trademark” includes any word, name, symbol, or
device, or any combination thereof–
(1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register
established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others
and to indicate the source of the goods, even if that source is unknown.

In this case, the problem was not the creation of a unique mark but the fact that the hashtag is “a widely-used message to convey information about the Chicago Cubs baseball team.” The board ruled that “That the applied-for mark is arbitrary or fanciful does not necessarily mean that the public perceives it as an indication of source.”

The ruling by Administrative Trademark Judge Linda A. Kuczma however goes more broadly to the trademarking of hashtags: “To be registrable, a hashtag—like any other matter—must function as a trademark. That applicant may have been the first to use the phrase and/or hashtag does not change the fact that the evidence shows widespread use of #MAGICNUBMER108 to informationally convey reference to the Chicago Cubs’ World Series appearance.”

Kuczma was joined in the opinion by judges Karen Kuhlke and Christopher Larkin.

The case is In re DePorter , TTAB, Serial No. 87229711, 1/29/19

Kudos: Prof. Roger Schechter