The San Diego Padres recently took control of the Amarillo minor league baseball organization. The organization will serve at the Padres’ Double A affiliate. In the spirit of new beginnings, the organization recently held a public naming contest to determine its new mascot. After the contest had concluded, the Sod Poodles were selected as the new mascot.
Unfortunately, it appears that Panhandle Baseball Club, Inc., the entity that owns and operates the Amarillo Sod Poodles, will not be able to obtain the exclusive right to use Amarillo Sod Poodles or Sod Poodles in commerce without a fight. It turns out that two Amarillo natives, Dusty and Nikki Green, both of whom had been critical of the team’s ownership, filed an intent-to-use (“ITU”) application with the United State Patent and Trademark Office on June 2, 2018, two days after the team name was announced and three days before Panhandle Baseball Club filed its ITU application for Sod Poodles on June 5, 2018, and over five months before Panhandle Baseball Club filed its ITU application for Amarillo Sod Poodles. So as far as filing prior is concerned, the Greens beat Panhandle Baseball Club to the punch.
According to Dusty Green, the team has made three offers to purchase the putative mark, but Green has rejected each of the offers and does not have an intent to sell. Truth be told, although Green seemingly has priority pursuant to his filing date, he does not have a federally registered trademark at this time. Although one must simply have a good faith intent to use the mark in commerce, an opposing party is free to challenge registration of the mark, and in doing so, challenge the initial registrant’s good faith intent to use the mark. Based upon statements issued by the Amarillo general manager Tony Ensor, it seems Panhandle Baseball Club will do exactly that.
“We are aware of this individual and we are following the trademark processes and procedures. We are not at all concerned and will let the process play out,” said Mr. Ensor to MyHighPlains.com. “We could not be more excited and confident about our name, this brand, and our logo! Sod Poodles is our brand and identity. We created it, and our community brought it to life. There is no way we are going to allow an outside individual who has nothing to do with our team try to take advantage of our team and this community.” I could be mistaken, but those sound like fighting words, and as a trademark practitioner, it is my belief that Panhandle Baseball Club will challenge the registration of Greens’ mark on the basis described above.
Practically speaking, it is likely that Panhandle Baseball Club will continue trying to acquire the Greens’ putative rights in the mark in order to avoid protracted and costly litigation. However, if the Greens are set on maintaining ownership of the mark, it seems that Panhandle Baseball Club is prepared for a fight. If I had to guess, I would say that the Greens will eventually sell their putative rights to Panhandle Baseball Club once they realize how expensive this nonsensical proceeding is. But for all I know, the Greens truly intend to utilize the mark in commerce and will stand their ground. Only time will tell, so stay tuned.