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

trademark
Is the trademark “Dunk City” up for grabs?

A Florida 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 new 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 Background

FGCU came into existence at about the same time the Internet began spreading through the suburbs like wild ivy, 1991. So, it is fitting that the tagline for which the school is now inextricably linked – Dunk City – dribbled into existence via hashtags, blogs posts and social media updates.

Perhaps “Dunk City’s” lack of verifiable provenance is why music producer Charlie Pennachio of Fort Myers, Florida, tried to snag federal trademark rights to the phrase soon after it went viral. After all, the chances that another party had already filed for the registration was slim.

In the middle of the FGCU winning streak, encouraged by his business partner –Florida music personality and VH1 reality show participant, Tripp Tribbett – Pennachio filed trademark registration paperwork with the United States Trademark and Patent Office. 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 is using “Dunk City” on merchandise alongside its logo. Perhaps more importantly, from a trademark registration standpoint, the school has been selling said products emblazoned with the phrase – which means the school was the first entity to use the mark in commerce.

Additionally, not only does a splash page on the school’s website now dons the tagline, but FGCU also 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, is “‘Dunk City’ is inextricably linked with FGCU. Had it not have achieved its fame or notoriety.”

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

The question of the hour is: does Pennachio have a chance at beating FGCU to the USPTO? And if he does, could he be granted the trademark registration for “Dunk City”?

In two words: probably not.  Here’s why:

  1. According to the Lanham Act – the nation’s chief trademark law – a party cannot register a trademark if another party is already using the mark or phrase commercially. Since the university uses it on merchandise, Pennachio will have a hard time proving that he used the term first. Most noteworthy, Pennachio admits to not hearing of the phrase until FGCU’s NCAA success.
  2. The school could argue “Dunk City” is technically a collective trademark of FGCU since the university used it on student identification badges. As a collective trademark, the school would enjoy strong trademark protections./li>
  3. The annual NCAA Basketball Tournament is a popular, national happening. Since “Dunk City” entered the public arena via a highly publicized event, attorneys for FGCU easily could  argue that the phrase is a “famous trademark” – which means it would be granted superior protection under the law. As such, the holders (FGCU) could sue for infringement and trademark dilution if Pennachio, et al. tried to use it to promote a music company.  Moreover, since there is no need to show likelihood of confusion, FGCU could stop others from using the mark in unrelated fields.  However, showing that a mark has reached a “famous” level is not a given, especially since it has only been in use for a short while — even with Dickie V. shouting it from courtside.

If you have a trademark legal issue, and need a lawyer who regularly deals with intellectual property litigation, get in touch with us here.

Yes, I Want to Speak with Someone about an Internet Law Issue »