Last year, the National Hockey League’s newest franchise – the Seattle Kraken – revealed its name to the world. The name reveal marked an important day for the new team; fans previously voted on potential team names, and it was important for the new franchise to get the decision right. While some fans (rightly) made fun of the connection between the catchphrase “Release the Kraken” and Liam Neeson’s famously cringey line in 2010’s Clash of the Titans, the name otherwise went over well. However, as we noted at the time, Seattle chose to wait until the name reveal to file any trademark applications. While this added some intrigue to the reveal ceremony, it risked potential trademark problems. Let’s take a deep dive into the Seattle Kraken trademark situation over the past year.
SEATTLE KRAKEN Trademarks – Initial Landscape
On July 21, 2020, only 77 trademark records existed including a variation of the term “KRAKEN”. Most of the applications and registrations listed teas, supplements, batteries, and sporting equipment, mostly swimming-based devices. However, a few applications related to the VANCOUVER KRAKENS eSports team in the same class – more on this below. On July 21, Seattle revealed its team name, and 31 new trademark applications suddenly appeared. Only two of these applications related to the team – one for entertainment services, and the other for various clothing items. The remaining 29 records appear to be entirely unrelated to the team, which is hardly surprising, considering how often trademark applications are filed on newly-popular phrases.
Thinking through Seattle’s plans for the KRAKEN brand, focusing the initial filings on entertainment services and clothing makes sense. The ownership group quickly followed up with ten additional filings for words and logos they plan to use in the same classes. Interestingly, the group applied for SEATTLE SOCKEYES as well, which was a rumored name before KRAKEN was revealed. An initial trademark portfolio of 12 applications is a start; however, looking at our own hometown team, the Lightning currently own 30 registrations and 2 applications. Seattle hasn’t played a game yet, so the cautious approach makes sense; however, being conservative with trademark applications when you have distinct plans for the near future isn’t always smart.
SEATTLE KRAKEN vs. KRAKEN BAR – Common Law Conflict Arises
Earlier this month, Seattle’s ownership group announced a multimillion-dollar practice facility and restaurant set to open in late 2021. The planned name for the restaurant was a natural extension of the team’s name – the KRAKEN BAR & GRILL. However, an issue quickly popped up – a punk dive bar in Seattle already exists under the name KRAKEN BAR & LOUNGE. The bar has continuously provided services since 2011. Moreover, the new Kraken facility is set to open less than 5 miles away from the dive bar. This week, the dive bar filed suit claiming common law trademark infringement (the dive bar hadn’t filed any trademark applications). Even though the Seattle Kraken likely has much deeper pockets than the dive bar, the team doesn’t want to start off by fighting with local venues. As such, the team announced on Friday that it would change the name of the restaurant in a forced rebranding effort.
Protection vs. Publicity
When it comes to publicity versus intellectual property protection, a trademark owner must walk a fine line. Brands begin to accrue trademark rights once used; moreover, as a brand owner, it’s important to grow public interest in the brand even before it launches. However, often with famous brands and widespread news stories, third parties allege infringement, sometimes legitimately and sometimes frivolously. As such, if you’re planning a highly publicized rollout, it’s a good idea to engage with an IP attorney to at least clear the name.
Trademark Portfolio – Don’t be Under-Inclusive
In addition, often, business owners have a long-term plan to expand beyond the initial scope. When selecting a name, a trademark owner should think about the natural evolution of the business. For Seattle, the ownership group recognized the importance of protecting the name for entertainment services and clothing. However, the group seemingly didn’t look into the landscape of protection for a restaurant. Every arena or stadium I’ve ever seen has team-themed restaurants; as such, restaurants are a natural extension of the entertainment services. Testing the field for restaurant names would have been a smart move in 2020, especially given the current situation. Moreover, since the public largely becomes aware of brand names through news stories, Seattle could have filed for trademark protection before revealing the restaurant’s name. That way, the team could have flown under the radar before approval of the trademark application, and then revealed the name.
Statements of Use – the Formalities Matter
Finally, in a previous article, we discussed the possibility that SEATTLE KRAKEN would be rejected based on VANCOUVER KRAKENS. The Trademark Office actually didn’t issue such a rejection; however, Vancouver faces its own difficulties with its trademark portfolio. It appears that the Trademark Office will let SEATTLE KRAKEN and VANCOUVER KRAKENS coexist, pending Vancouver filing a better specimen. Vancouver’s original specimen did not link the listed eSports services to the satisfaction of the Trademark Office. The Office has recently cracked down (no pun intended) on specimens; as such, filing a faulty specimen will hold an application up unnecessarily. Getting the specimen right on the first attempt will remove any last-minute derailing of the trademark application.