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NHL owns “Seattle Metropolitans” trademark in Canada, but not U.S.

June 23, 2017

 

Photo via Pudget Sound Business Journal

 

 

 

 

The big talk in the hockey world this summer has been the NHL’s new expansion franchise, the Las Vegas Golden Knights. With the addition of the first major sports franchise in “Sin City,” the NHL now boasts 31 teams—16 teams in the Eastern Conference and 15 teams in the Western Conference. Due to this uneven number, there is now speculation as to where the NHL will expand to next. Since there is one fewer team out west, it would make some sense to expand to another western city. If that’s the case, the most likely destination would be Seattle.

 

The “Emerald City” has a surprisingly long hockey history that dates back 100 years. In fact, the Seattle Metropolitans were founded in 1915 by Frank and Lester Patrick (yes, those Patrick’s), and became the first US based team to win the Stanley Cup by beating the Montreal Canadiens in 1917. The Mets played in the Pacific Coast Hockey Association—a rival of the NHL—until the team folded in 1924. While there have been many hockey teams based in Seattle over the years (shout out to the Seattle Thunderbirds on winning the 2017 WHL Championship), there has not been an NHL franchise.

 

It appears that the NHL has had its eye on Seattle and the Metropolitans nickname, as the league acquired the rights to the “Seattle Metropolitans” name and S-shaped logo in Canada in 2012 from Vintage Leagues Ltd. (a company based out of Vancouver), allowing them to sell Mets merchandise in the Great White North. See the trademark for the name here and the logo here.

 

But, there is a slight problem . . . Someone already owns the “Seattle Metropolitans” name and logo trademark in the United States. And that person is Paul Kim, a 26-year old University of Washington graduate from Lynnwood, Washington, who registered with the United States Patent and Trademark Office in 2016. See below:

 

 

According to the New York Times, Mr. Kim, “became smitten with the lost franchise after immigrating to Seattle from South Korea as a child,” and is a hockey fanatic who is hoping the NHL comes to Seattle. It appears that Mr. Kim runs the Seattle Metropolitans website, where he sells apparel and promotes the idea of bringing an NHL franchise to his city. However, it should be noted that despite the growing idea of the NHL in Seattle, there have not been official announcements for plans to build an arena or an ownership group that wants to own the Seattle franchise. And even if the NHL decides to bring a team to Seattle, there’s no guarantee that they would be called the Metropolitans. Thus, it remains to be seen if Mr. Kim’s move will turn into a big payday for him.
Sources:

New York Times

Pudget Sound Business Journal

NHLtoSeattle.com

 

Commentary

 

It should be noted that Trademarks and Copyrights are two different things. Trademarks cover things like logos and team names (words, phrases, symbols, designs), while copyrights cover artistic and literary works.

 

To file a trademark application with the United States Patent and Trademark Office, it is highly recommended to hire an attorney since the registration process is a legal proceeding that includes strict deadlines and rules. Trademarks can be filed online using the Trademark Electronic Application System (TEAS). Before registering, you can check the Trademark Electronic Search System (TESS) to make sure there aren’t any similar marks currently registered.

 

The cost for filing an application for a trademark depends on three factors:

(1) Number of Marks - Multiple marks require separate applications with its own filing fee. Thus, Mr. Kim had separate applications for the name “Seattle Metropolitans” and the S-shaped logo.

(2) Number of Classes: - You must pay for each class of goods and/or services in the application. It appears the Mr. Kim registered the name and logo under Class 25 for clothing, footwear, and headgear.

(3) Application Filing Option Selected

 

In order to file a trademark, one must have a “basis” for filing a trademark, meaning you must show that you have used the mark in commerce or intend to do so. The two types of filing “basis” are (a) “use in commerce,” and (b) “intent to use.” As stated by the USPTO:

 

If you have already used your mark in commerce with all the goods/services in your application, you may file under the "use in commerce" basis. If you have not yet used your mark in commerce with all the goods/services in your application, but intend to do so in the near future, you must file your trademark application under an "intent to use" basis. This means you have a bona fide intent to use the mark in commerce; that is, you have more than just an idea but are less than market ready (for example, having a business plan, creating samples products, or performing other initial business activities). An "intent to use" basis requires filing an additional form(s) and fee(s) prior to registration that is not required if you file under "use in commerce" at the outset.

 

It appears that the filing basis for the “Seattle Metropolitans” was done as a “use in commerce” with the first use being in November 2015, while the S-logo was originally filed under a “intent to use” basis, but has been amended to “use in commerce.” However, the “Seattle Metros” trademark was filed under an “intent to use” trademark, as it does not seem that Mr. Kim has used this name on any of his apparel yet.

 

Once the USPTO decides that your application has met the minimum filing requirements, you receive an application serial number and the application is then reviewed by an examining attorney, which can take a few months. If the application is approved, the trademark is then published in the Official Gazette. After publication, “any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to respond.” If there is an opposition, a hearing is held before the Trademark Trial and Appeal Board, which is like a proceeding in federal court.

 

For example, the “Seattle Metropolitans” nickname was given the serial number 86884535 and was published for opposition on October 4, 2016.

 

For more about this long process please check out the USPTO website

 

Clearly, filing a trademark is an extremely intricate and long process. The above information is just a snapshot of some of the things to keep in mind if you want to be the next Paul Kim.

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