#trademark

SFO v. OAK

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Understanding the Bay Area’s Newest Trademark Battle

By: Anushka Parihar

The San Francisco Bay Area is one of California’s most visited tourist destinations. Millions of visitors a year fly into San Francisco International Airport (SFO) and Oakland International Airport (OAK) to experience the Bay Area’s diverse culture, beautiful landscapes, and innovative spirit. 

Between 2019-2023, travel to Oakland decreased by nearly 2 million people, which the OAK attributes to the Covid-19 pandemic. In response, OAK has launched an advertising campaign intended to increase tourism, including a proposition to rename Oakland International Airport to “San Francisco Bay Oakland International Airport.” However, the City of San Francisco argues that this campaign, along with the OAK’s proposed name change, closely resembles SFO’s trademarked name and themes. These efforts, San Francisco claims, create confusion amongst travelers, leading them to believe that the Oakland and San Francisco airports are the same entity. 

San Francisco City Attorney David Chiu filed suit against Oakland, alleging that OAK’s new name infringes on San Francisco’s registered trademark. The suit seeks an injunction against Oakland and its associated partners, such as airlines, rental cars companies, and travel agencies, to prevent them from using the disputed name. 

The Trademark Battle

Trademarks are words, phrases, symbols, designs, or a combination of these elements that identify goods or services. They are important in protecting a brand’s identity and ensuring consumers recognize brands in the marketplace. In this way, trademarks can be valuable marketing tools. Having a well-known trademark can draw in new customers and keep current customers loyal to the brand. Trademarks also offer clear and enforceable legal rights, allowing brands to block competitors from adopting similar marks that mislead customers. As such, trademark law prevents unfair competition which can be damaging to businesses. 

Trademark infringement occurs when there is an unauthorized use of a trademark that could lead to confusion, deception, or misunderstanding about the source of the good or service associated with the trademark. To successfully show that infringement occurred, the plaintiff must show that the alleged infringer’s infringing goods or services create a likelihood of confusion regarding the source. 

SFO argues that OAK’s renaming to “San Francisco Bay Area Oakland International Airport” would infringe on its trademark, “San Francisco International Airport.” They claim that their name is well-recognized and the new OAK name could confuse consumers as to which airport they are actually flying in or out of, particularly international travelers who are unfamiliar with the area. Consequently, SFO could lose travelers and business to OAK, which is 30 miles away from SFO. This could also inconvenience travelers expecting to be in San Francisco, who must now find their way across the Bay. 

Oakland may respond in a few different ways. They may try to show that there is no real likelihood of confusion. If they are able to show that consumers can distinguish between the two airports, perhaps through a survey, OAK could show that SFO’s claim lacks merit. They could also challenge the strength of SFO’s trademark by arguing that a geographically descriptive term should not have trademark protection. 

Possible Implications

If SFO prevails, they’d be able to reinforce the strength of their trademark and set a precedent about how geographic locations can be used for branding and source identification. OAK would then need to revert to their previous name and restructure their entire advertising campaign, which has already cost an estimated $150,000. 

Conversely, a favorable outcome for OAK could impact how geographical trademarks are used in brand identification, creating a precedent that using geographically descriptive names may not lead to trademark disputes. It would also allow Oakland to continue its marketing strategy and attract a larger customer base. Perhaps OAK could bring business back to the point that it was prior to the pandemic. 

Alternatively, this dispute might settle out of court, if both parties are able to negotiate the terms of use of the name or for financial compensation. This way, San Francisco and Oakland could avoid unnecessary litigation and expenses. 

This local issue might create larger implications for industries where identity and consumer perception are important. As this case progresses, businesses will undoubtedly be following the dispute to ensure their branding and marketing strategies are compliant with t

Major Tuddy’s Major Trademark Issue

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By: Kelton McLeod

On January 1st, 2023, the Washington Commanders unveiled a new mascot, Major Tuddy, a tall humanoid hog, wearing a military-inspired helmet and a perpetual grin. The unveiling has gone over with a healthy mix of derision and confusion, just about as well as anything one would expect to come from the Dan Snyder-owned Commanders. While even casual football fans might understand that Major Tuddy is named after the slang term for a touchdown, some are confused why the Washington, D.C.-based football team would want a hog to be the new symbol of their organization, while others are filing a trademark lawsuit because of it. 

From the 1980s and into the 1990s, Washington had the best offensive line in all of professional football. These men, including the likes of Joe Jacoby and Mark May, were known as The Hogs. The Hogs were, and remain, an important piece of Washington’s history, helping the team win its only three Super Bowls. But despite bursting onto the scene through a sign emblazoned with “Let’s Get Hog Wild,” Major Tuddy has not had many fans, players, or former players very excited. 

Instead of being a triumph at the end of a lackluster season (the Commanders were eliminated from playoff contention the day Major Tuddy was revealed), Major Tuddy has proved to be yet another point of controversy for the Commanders Organization. In fact, some of the original Hogs, including the likes of Joe Jacoby and Mark May, are so unenthused with the new mascot that they issued a statement prior to Major Tuddy’s announcement distancing themselves from Dan Snyder (the Commanders current majority owner) and referencing potential legal action related to this new Hog. The members of the original Hogs (joined by John Riggins, Fred Dean, and Doc Walker) created O-Line Entertainment, LLC,  and in July of 2022, O-Line Entertainment filed trademark applications to the federal register for ‘Hogs’ and ‘Original Hogs,’ as the terms relate to professional football paraphernalia and merchandise. O-Line Entertainment sees Major Tuddy as a potential infringement on their mark, an outright attempt to capitalize and commercialize on the work of the Hogs of the 80s and 90s, and an attempt to confuse the fans. 

While the Commanders imply they have no intention to financially capitalize on Hogs as a mark, O-Line Entertainment has a real shot at being able to exclude the Commanders from even trying. The Lanham Act §43(a) creates a statutory cause of action for trademark infringement, where “any person who . . .uses in commerce any word, term, name, symbol, or device, . . . likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person . . . shall be liable in a civil action by any person who believes that he is or is likely to be damaged by such act.” Trademarks exist to help consumers identify the source of a good. So, if someone attempts to use another’s mark, or something substantially similar, to cause confusion as to the source or sponsorship of a good, that party is liable for trademark infringement. In this case, it is hard to refute the source of Major Tuddy’s swine heritage, as even his official team profile references the offensive line from the 80s and 90s. O-Line Entertainment would just need to prove that the likelihood of confusion exists between their products and those of the Commanders organization, not that actual confusion has occurred. Under current law, there is a prospect of O-line Entertainment doing so.

While O-Line Entertainment’s trademark registration has yet to be granted, and the Commanders organization could attempt to invalidate it, this likely would not be worth the problems it would cause. The Commanders are already in the midst of a Congressional investigation, and Dan Snyder’s time as owner might not be able to handle the bad press. While it is hard to expect Dan Snyder and the Commanders leadership team–a group known for trying and failing to hide behind the best parts of their team’s legacy–to handle themselves in a morally upstanding way, how they choose to handle the marketing and merchandising of their new mascot could mean another long and protracted trademark dispute where they lack the moral high ground.