In April, the St. Louis Blues (the “Blues”) hockey team made an improbable run from being dead-last in the standings in January, to winning the National Hockey League’s (“NHL”) Stanley Cup Final at season’s end. Throughout that run, Laura Branigan’s 1982 disco hit “Gloria” became the Blues signature song used to celebrate a win. Credit to the team’s use of the track can be given to the bar The Jacks NYB (“Jacks”), where five Blues players went to watch a National Football League (“NFL”) playoff game between the Philadelphia Eagles and Chicago Bears. As the Philadelphia Eagles went on to win that night, “Gloria” was played repeatedly at the bar in celebration. The next day, the Blues beat the Philadelphia Flyers (and played the song in the locker room following the win), initiating a 29-9-5 run to end the regular season. As the Blues moved out of the league cellar, Jacks raised money for food, drink and televisions by selling “Play Gloria” t-shirts. And as the Blues advanced into the playoffs, other vendors looked to monetize the “Play Gloria” slogan. Jacks believes that it has been deprived of revenue from these other vendors and has turned to trademark law for compensation. Particularly, on or around May 8, 2019, a trademark-based cease-and-desist letter was sent to Arch Apparel, a St. Louis-based t-shirt company that had seen quick success in selling its “Play Gloria” t-shirts.
Has Arch Apparel infringed upon Jacks’ trademark law rights?
Establishing Rights Under Trademark Law
A trademark is a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of goods. In order to register a trademark, the applicant must provide a valid example of how the trademark represents the source of goods in commerce (the “specimen”). The United States Patent and Trademark Office (“USPTO”) distinguishes between a valid specimen and one that is simply ornamental or decorative. In the past, the USPTO has refused trademark applications which include specimens that were slogans displayed on t-shirts on the basis that they did not identify the source of the subject goods and were simply ornamental or decorative in nature.
Turning to the dispute at hand, we understand that Jacks has submitted an application with the USPTO for the “Play Gloria” mark. The application has yet to be assigned to an examining attorney. The specimen offered by Jacks in connection with its trademark application is a t-shirt with the slogan “Play Gloria” emblazoned on its front. It is possible that the examining attorney finds that the specimen is ornamental or decorative and, therefore, not protectable under applicable trademark law.
Other Barriers to Enforcement
The USPTO will also refuse registration for trademarks that merely convey an informational social, political, religious, or similar kind of message, depending on how a term or slogan would be perceived by the relevant public. For example, the application for “Boston Strong” was denied for this reason because sports fans co-opted “Boston Strong” as a rallying cry. Similarly, the USPTO may find “Play Gloria” to be an informational social message that is perceived by the St. Louis community to signify a win and not as a source identifier for Jacks.
In Star Athletica, L.L.C. v. Varsity Brands, Inc., the U.S. Supreme Court ruled that design elements of clothing may be copyrighted if the design could be copyrighted separately from the applicable item of clothing. Copyrights are extended to original works of authorship with a minimal degree of creativity. As such, it is possible that Jack’s “Play Gloria” design is protectable under copyright law.
Status of the Dispute
Despite receiving a cease-and-desist letter, it seems that Arch Apparel has decided to continue selling its “Play Gloria” t-shirts. In doing so, it can be assumed that Arch Apparel believes that Jacks does not have any protectable trademark rights to (or copyright interests in) “Play Gloria” t-shirts.