On Tuesday, the U.S. Patent and Trademark Office issued an initial rejection of an attempt by the Baltimore Ravens to trademark “Charm City,” one of the most commonly used nicknames for Baltimore.
Regulators have ruled that geographic names are “free for all businesses operating in the same area to inform customers where their goods or services originate,” the federal office’s “Non-Final Action” states.
The Ravens applied for the trademark in February in connection with posters, calendars, books relating to football and more, according to filings.
In a statement, the Ravens said that “the intent of this trademark filing is not to prevent anyone from the general use of ‘Charm City.’ We understand that ‘Charm City’ is a commonly utilized moniker by many entities, and we fully respect that.”
“Our trademark filing is specific to anything in connection with, or relating to, Baltimore Ravens professional football. This includes team marketing campaigns — such as ‘Charm City Football,’ which is used to represent the history of football in Baltimore — slogans, merchandise and promotional items,” the team added.
The Baltimore Banner asked several experts in trademark law to weigh in.
The Ravens said their application does not seek to limit who can use the words ”Charm City” outside of a football connection. Is that the case?
Julie Hopkins — a clinical instructor and adjunct professor at the University of Maryland Francis King Carey School of Law, and founder of Hopkins IP, an intellectual property firm — said many of the goods and services the Ravens listed on their application were limited to football. “So, they’re right with that,” she said. “I think that does support their intent to not enforce the mark against anyone outside of the football arena.”
For example, the Ravens included items like “books relating to football, programs and magazines relating to football,” and “men’s, women’s and children’s clothing used in the promotion of a professional football team by the name of the Baltimore Ravens,” on their application, which are limited to the sport.
Technically, though, if the Ravens are able to successfully trademark “Charm City,” they may be able to enforce their rights more broadly.
That’s because the Ravens could enforce their rights against any other mark that is “confusingly similar,” a legal test for trademark infringement.
“They don’t have to be identical,” Hopkins said. “So, there’s nothing stopping the Ravens from enforcing the mark against others outside of the football space.”
But, she said, that may not be the Ravens’ intent. That’s significant because the Ravens don’t have to go after every infringer. “If their intent is to be respectful to other businesses in Baltimore,” she said, they could choose to only go after, for example, people selling counterfeit or knock-off items.
Patricia Campbell, professor and director of the intellectual property law program at the University of Maryland Francis King Carey School of Law, pointed out that there are some items listed on the Ravens’ application that are not limited to football.
Posters, calendars, trading cards, stickers, flags and other items were listed more generally.
“So while they’re saying that that’s their intent, that’s not entirely consistent with the application for registration that they filed with the USPTO,” she said.
And as California-based trademark attorney Robert E. Wasserman observed, the reason businesses typically register a trademark in the first place is to restrict others from using it.
On the other hand, he said, a lawyer registering a trademark may want to start out being as broad as possible, “because you can always whittle it down” in future stages of the process.
“It’s like a haircut,” Wasserman added, “once it’s removed, you can’t add it back.”
How might the Ravens be able to overcome the initial rejection?
For starters, the team could narrow its request or abandon the application.
If they wanted to continue trying to register “Charm City,” the Ravens could try to gather evidence and argue Charm City is not a well-known nickname for Baltimore, Hopkins said. But, Campbell said that could be hard to prove.
The Ravens could also try to move their application from the principal register to the supplemental register, which is for weaker marks, Campbell said. To qualify for the supplemental register, an applicant must already be selling items displaying the prospective mark or providing services under it.
Over time, if people start associating Charm City specifically with the Ravens, they might be able to move their application to the principal register, which would give them a bigger bundle of rights.
But Yvette Liebesman, a professor at the Saint Louis University School of Law said that might be difficult, as it normally takes about five years and enough marketing to make the association, and it still might never happen.
The Ravens’ odds of getting a trademark approved would increase dramatically, she said, if they registered a more distinctive mark like “Charm City Ravens” or “Charm City Football.”