Monthly Archives: September 2008

One Team – Six Names

Shortly after the announcement was made in July that the Seattle franchise of the National Basketball Association would be moving to Oklahoma City, speculation began: What would the team be called?  The name “supersonic” has no inherent application to Oklahoma City, but that didn’t stop the Lakers from keeping their name when they moved from Minneapolis to Los Angeles or the Jazz when they moved from New Orleans to Utah.

A search of the records of the U.S. Patent and Trademark Office can give us a clue as to what the future name of the franchise will be.  Between July 21 and July 25, 2008, a total of 42 applications for a variety of goods and services were filed for the OKLAHOMA CITY THUNDER, OKLAHOMA CITY MARSHALLS, OKLAHOMA CITY ENERGY, OKLAHOMA CITY WIND, OKLAHOMA CITY BARONS and OKLAHOMA CITY BISON.

Why were so many names filed for trademark protection if there’s ultimately only going to be one team name? 

Each of the applications was filed with an “intent to use” under Section 1(b) of the Trademark Act.  There are advantages and disadvantages to filing Intent-to-Use (ITU) applications. The major advantage to filing an ITU is that the applicant gets its foot in the door as far as trademark rights.  Under U.S. trademark law, rights are normally based on use; the party who first uses the mark in commerce generally has superior rights.  But when filing an Intent-to-Use application the filing date becomes the constructive date of first use. 

In other words, when an application for OKLAHOMA CITY THUNDER was filed for a wide variety of clothing on July 21, 2008, as long as the application isn’t abandoned, no one could later claim superior rights to that particular mark for those particular goods, unless they could prove that they were actually using the mark in commerce before July 21, 2008.  Protecting six different names at one time gives the applicant this protection for all of them while sorting out which one will finally be used.

The major disadvantage to filing an ITU comes later, when the applicant has to allege use of the mark.  Although the initial filing fee for an ITU is identical to that of a comparable application based on actual use, the ITU applicant will eventually have to pay an additional fee of $100 before registration can issue.  Once an ITU application is cleared for registration, the applicant has six months to allege use or the application will be deemed abandoned.  Six-month extensions may be granted, up to a total of three years after clearance, but each extension costs an additional $150 filing fee. 

However, in the case of the Oklahoma City basketball franchise, by the time any of the six names are cleared for registration, the final decision on the team’s name will more than likely have already been made, and the remaining five names can be abandoned without paying any additional fees. In case you feel like taking bets as to what the name of the new franchise will be, you can safely scratch Supersonics off your list.  Two applications for OKLAHOMA CITY SUPERSONICS were filed on July 8, 2008, but each application was expressly abandoned just one week later, no doubt because of the settlement arrangement that the Sonics’ name, history and colors will remain in Seattle. 

 If any of the remaining six names are likewise abandoned, you can narrow the list even more. UPDATE:  It’s official! The Oklahoma City NBA franchise will be called the OKLAHOMA CITY THUNDER.  The announcement was made on September 3, 2008.  According to a recent FOX Sports article, the decision was already made in mid-July, when it was leaked by the local ABC affiliate. 

Other clues included the premature use of the URL, the appearance of the name on the Orlando Magic’s schedule, and the leaking of the logo and colors a few days before the announcement.  Since merchandise has already gone on sale, we can expect the team to allege use of OKLAHOMA CITY THUNDER some time soon. All this begs the question:  If the name was actually decided upon in mid-July, then why were so many Intent-to-Use applications filed for all those other names between July 21 and July 25?  Was this all just an elaborate ruse? Perhaps the local ABC affiliate made a lucky guess.  One thing is certain:  the applications for the other names will eventually be abandoned. 

Carl Mueller, CLAS is a Certified Paralegal with Advanced Paralegal Certification in Intellectual Property with the Law Office of Chris Stewart, P.C.  He can be reached