Will Rogers once said “Letting the cat out of the bag is a whole lot easier than putting it back in.” While he surely didn’t intend it that way, this is sage advice to incipient trademark owners. Consider, if you will, the “sport” of Fowling.
Apparently sometime around 2002, a gentleman in Michigan named Chris Hutt, invented a game that combined bowling and football and called it “Fowling.” Recently, The Wall Street Journal published a column describing the game and Mr. Hutt’s subsequent efforts to perfect and enforce trademark rights in the name.
In 2015, Mr. Hutt’s company applied to register several trademarks, including the marks FOWLING and BONK that are mentioned in the article. Also in 2015 (and maybe earlier, the article doesn’t say) his lawyers began to send cease and desist letters to third parties that operated Fowling leagues/events. In some cases the recipients ceased use of the term and in others they did not. As for the trademark applications, the results to date have been disappointing for Mr. Hutt to say the least.
One of the applications for the word mark FOWLING that covers the equipment used to play the game, was rejected because “the word ‘fowling’ refers to a hybrid game that combines the equipment of American football and bowling into one sport, where players throw footballs at bowling pins which are placed upon platforms or lanes. The equipment used to play fowling consists of one football, 20 bowling pins, and two platforms, which are called lanes. Therefore, in connection with applicant’s sports equipment, the applied-for mark merely describes the purpose or use for the goods, namely, the sports equipment is to be used to play a hybrid game that combines the equipment of American football and bowling into one sport.”
The Examining Attorney also cited other evidence of third-party use of the word “fowling” to describe the same game, some dating back as far as 2010. The same objection was raised against several other applications that included the term fowling. In a nutshell, the PTO’s position is that, as a result of substantial unchecked use of the term by the public at large, the word “fowling” has become the common descriptive name for a sport that combines American football and bowling. In other words, fowling is no more a trademark than baseball, basketball, or hockey. It matters little that Mr. Hutt invented the sport if he then allowed the name to be used descriptively by third parties for the next 10-12 years.
The applications are still in the examination process but the lesson here is clear—the time to think about trademark protection is when you first conceive of a product or service and prior to the time you go to market. In consultation with counsel, you can take steps right from the start to ensure that your use of the mark is used consistently as a proper trademark and to devise a strategy to address improper uses of the mark by the press and public. This is not always easy, but it’s a heck of a lot easier if you address it from the start rather than to trying to put the cat back in the bag 10-12 years later.
By the way, the application to register BONK was also rejected but on grounds that it is confusingly similar to another registration for BONK covering nearly identical clothing items.