Takeaway: Trademarking a nickname can be tricky even if the organization is recognized by people nationwide as the source of goods or services.
Anyone who has been a fan of the NFL’s Jacksonville Jaguars likely knows that the Jaguars’ defense became a force to be reckoned with in the 2017-2018 football season. The sudden dominance on the defensive side of the ball resulted in the Jaguars gaining the nickname “Sacksonville.” Seeing an opportunity to capitalize on the nickname, the Jaguars started selling merchandise featuring the phrase #Sacksonville.
If you google the phrase “Sacksonville” the first thing that appears in your results is the Jacksonville Jaguars’ current schedule along side an NFL Shop advertisement displaying the #Sacksonville phrase on a t-shirt above the Jacksonville Jaguars’ logo. Not surprisingly, the Jaguars have filed a trademark application on the phrase #Sacksonville, which published for opposition in March of this year.
However, in May, a former Jaguars player, Dan Skuta, has filed an opposition against his former team to prevent them from receiving a federal registration on the trademark. Skuta was cut by the Jaguars before the 2017 season, which was when the Jaguars developed their reputation for having a great defense. Even though Skuta was not associated with the team when their defensive reputation began to develop, he claims that he was the one who came up with the nickname “Sacksonville.”
Skuta is claiming that there will be a likelihood of confusion as to the source of the products being sold under the “Sacksonville” name because he had an Instagram account using the name before the Jaguars were recognized with the nickname. So far, there have been several extensions of time on the opposition because the parties are currently engaged in settlement discussions.
We will have to wait and see how this opposition plays out, but the case presents an interesting issue considering the fact that Skuta has public disclosured using the mark before the Jaguars. But on the other hand, most people hearing the phrase would think the product was coming from the Jaguars, not Skuta.
Photo Credit: https://twitter.com/Jaguars
