By now just about everyone is aware that the UMBC Retrievers became the first Number 16 seed to beat a Number 1 seed in the NCAA men’s basketball tournament. Prior to this past Friday night, many may not have been aware of the existence of UMBC, and now everyone is talking about this historical win.
With the massive amounts of attention that the school is getting, the school’s officials were made aware that UMBC did not have a trademark registration for “Retrievers.”
Several news reports have alleged that a trademark application to register “Retrievers” will be forthcoming along with trademark applications for the marks “16 over 1” and “Retriever Nation” under Class 25 which includes clothing, footwear and headgear.
While registration is not necessary to acquire trademark rights because the United States federal law recognizes common law trademarks, federal registration of a trademark does provide many important benefits.
A. UMBC’s Common Law Trademark Rights
UMBC has likely acquired common law trademark rights in the mark “Retrievers”. According to news reports, Retriever Nation was not previously used as a trademark by UMBC prior to the Friday night win over Virginia. Similarly, “16 over 1” was not previously used as a trademark by UMBC; these two marks will likely be filed pursuant to an Intent to Use Trademark Application.
UMBC’s common law rights to the mark “Retrievers” only extends to the territories in which the mark is used and in the territories where the mark has acquired consumer recognition which is based on how well known the mark is among consumers.
UMBC could likely prevent anyone in the Baltimore, Maryland territory and perhaps in the entire state of Maryland, from using the mark “Retrievers” in a manner that would cause a likelihood of confusion. However, outside of Maryland, UMBC would have to prove that the marks have acquired consumer recognition.
A federal registration would prevent the need for UMBC establish that its trademarks have acquired consumer recognition outside of its territory.
B. Federal Trademark Registration
A federal trademark registration grants the registrant of the trademark a nationwide right of priority in connection with the goods and services covered by the trademark registration against anyone who uses a confusingly similar mark after the filing date of the trademark application.
Federal trademark registration provides additional benefits including a presumption that the mark is valid and that the registrant is the owner of the mark, protection against imports of similarly branded good from offshore manufacturers, and the ability to pursue statutory damages rather than actual damages in a trademark infringement case.
Assuming UMBC receives its federal trademark registrations for these marks, it will be able to prevent anyone from using the marks in connection with the goods and services covered by the trademark registrations.