Cognate's Trademark Blog

Can A Bat From Finland Really Be Called A ‘Louisville Slugger’?

 

Soon Finnish people will understand what Carrie Underwood means when she sings “I took a ‘Louisville Slugger’ to both headlights.”  With a brand iconic enough to be a hit lyric of the country music variety, “Louisville Slugger” may know a thing or two about owning a trademark which has, as we say in the trade, “acquired distinctiveness.”  Lots of place-names end up in trademarks. But it is sometimes a slow road before a geographic name like Louisville can become a hit.  A name like “Louisville Slugger” can double as both place and product name.  A product named after a place may run afoul of trademark law.

The general concept is simple. Any name that describes a feature, characteristic or trait of the product is suspect. It is considered “descriptive.” A descriptive term of that type cannot be owned by any single company until and unless the company has shown that the product is what people think of when they hear the name of a particular brand or product.

If an artificial sugar has the name “sweet” in it, like “Sweet and Snappy,” the mark’s owner cannot stop others from using “sweet” unless consumers associate this not with a description of the product, but recognize it as a brand name.  It would not be fair to competition to allow someone to take a word out of the dictionary and exclude all others from using an actual dictionary term that applied to the product. If you can turn a word double-play and associate the name with the product (without regard to meaning) you can use it.

This leads to one of the great misconceptions of trademark law. You can earn rights in descriptive words if you have used and advertised them enough. I can own exclusive rights to use “Fork” for a mechanical pencil even though I can’t stop others from using it for forks.  (No one can ever own the generic name for the product itself, like “Fork” for forks. But “Fork” for pencils, computers, or computer consulting services — go for it!)

The same principle applies to a name that reflects the geographic source of the product. It is not fair to say no one can own rights in a mark which may not describe the product, but describes where it comes from.  Would “Louisville Slugger” be the only company in Louisville which could make bats? No. Any competitor could step to the plate.  But once the name Louisville is associated with the product, then no one needs to be hit over the head to see the value in allowing protection as a trademark.

The principle applies to surnames as well. Like “Wilson,” as in Wilson Sporting Goods Co., which is the new parent/affiliate of Louisville Slugger.  If you’re named Wilson and want to sell sporting goods, that is OK, unless some other Wilson not only got there first, but has then also established rights in the name so that when a consumer heard “Wilson” in connection with sporting goods, they would associate it with a specific company. Both “Wilson” and “Louisville” will now be owned by the Finnish company, Amer Sports Oyj (which also owns other brands, such as ski makers “Solomon,” “Atomic”).
Thumb louisville slugger museum
Louisville Slugger Museum, Louisville, KY (Photo Credit: Peter Fitzgerald)

Reports indicate that bats will still be made in Louisville, though the company apparently also manufactures in California and elsewhere.  This means that even if there were a transfer of manufacturing to Finland (nowhere in the announced plans), they could use the mark, because where a trademark is already well known in the USA to signify a brand of bat, not a geographic origin, it is safe to keep using.

There have been instances (I was involved in one) where a state government did not take kindly to plans to move production out of state, and sued to say that the name, if applied to goods made elsewhere, would deceive consumers. This type of challenge is rare and would not be easy. (As a footnote, the trademark laws were changed in 1993 to prevent “misdescriptive geographic marks” from ever being registered with the United States Patent and Trademark Office. A mark like “Louisville Slugger” was grandfathered in. But if “Louisville Slugger” were made somewhere else, whether in Finland or Florida, there might have been a problem.

While clever lawyers can always make these kinds of arguments, at the end of the day, it seems that even a Finnish company will be safe owning rights to use the name “Louisville” to the sell all-American baseball bat.

This post originally appeared on Forbes

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