If I’m The First to File For A Trademark Registration, Do I Get It?

picture of guy dunking to accompany article about Dunk City answering question: If I’m The First to File For A Trademark Registration, Do I Get ItWe’re often asked: “If I’m the first to file for a trademark registration, will I automatically get it?” To uncover the answer, let’s deconstruct a recent case.

A businessman is trying to grab the trademark rights to “Dunk City.” Will the USPTO grant him the rights to the phrase? Does he have a legal leg to stand on?

Florida Gulf Coast University came, saw, and conquered. Well, they conquered until the Elite 8 when a neighbor Gator team defeated the beloved underdog of this year’s NCAA tourney. But the loss mattered little.  America was already smoldering with a case of FGCU fever. People wondered, “What is the deal with this school and how did they get such a talented basketball team!? Is it a fluke, or is FGCU a new force on the court?

Within days, every leading media outlet mentioned the Florida university, and all used the term ‘Dunk City’ – a moniker of unclear origins – to refer to the new basketball phenoms.

Now, an industrious businessman from the Gulf Coast – who clearly understands the financial power of intellectual property – is trying to register the trademark “Dunk City.” Can he?

Dunk City Intellectual Property Case: Is The First To File For A Trademark Registration The Automatic Recipient?

FGCU came into existence at about the same time the Internet began spreading like wild ivy, 1991. So, it’s fitting that the school’s new tagline – Dunk City – dribbled into existence via hashtags.

Perhaps “Dunk City’s” lack of verifiable provenance is why producer Charlie Pennachio of Fort Myers, Florida, tried to snag federal trademark rights to the phrase soon after it went viral.

In the middle of the FGCU winning streak, encouraged by his business partner –Florida personality and VH1 reality show participant, Tripp Tribbett – Pennachio filed formal, federal trademark registration paperwork. He requested rights to the phrase “Dunk City” for a yet undetermined business.

Florida Gulf State University’s Claim to “Dunk City”

Currently, Florida Gulf Coast University uses “Dunk City” on merchandise. More importantly, from a trademark registration standpoint, the school sells products emblazoned with the phrase. In other words, the school first used the mark in commerce.

Additionally, the school’s website dons the tagline. Plus, FGCU used “the term as a part of a campus food drive. The school created Sixteen hundred student IDs with the ‘Dunk City’ moniker.” Students who donated goods to a local food bank drive were given the special IDs as thanks.

The position of Michael Van Wieren, General Counsel of licensing Resource Group, the firm that handles school’s licensing program, explained that “‘Dunk City’ is inextricably linked with FGCU. Had it not have achieved its fame or notoriety.”

Does Pennachio Have A Shot At The Trademark for ‘Dunk City’?

The question: Will Pennachio get “Dunk City”, over FGCU, since he was the first to file a trademark registration? Probably not.  Here’s why:

  1. According to the Lanham Act, a party cannot register a trademark already in commercial use. Since the university uses it on merchandise, Pennachio will have a hard time proving that he used the term first. Most noteworthy, Pennachio admits that he never heard the phrase until FGCU’s success.
  2. The school could argue “Dunk City” is a collective trademark since the university used it on student identification badges. As a collective trademark, the school would enjoy strong trademark protections.
  3. The annual NCAA Basketball Tournament is a popular happening. Since “Dunk City” entered the public consciousness via a publicized event, attorneys could  argue that the phrase is a “famous trademark.” As such, FGCU could sue for infringement and trademark dilution if Pennachio tried to use it for alternative reasons — like promoting a music company.  Moreover, since there is no need to show likelihood of confusion, FGCU could stop other parties from using the mark.

If you have a trademark legal issue, and need a lawyer with intellectual property litigation experience, get in touch.

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