Local attorney Greg Stone of WTP Law discusses the Baltimore Ravens’ pursuit of the “Charm City” trademark and what it means for local business who already use those words as part of their brand. A fascinating discussion about who owns what and why.
SUMMARY KEYWORDS
charm, city, ravens, trademark, trademark office, baltimore, registration, trademark registration, supplemental, term, people, attorney, football, register, examiner, case, business, patent, descriptive, examining
00:01
W n s t Towson, Baltimore and Baltimore positive. We are celebrating 31 years Baltimore radio as of Tuesday this week we’re gonna be celebrating on Thursday we’re gonna go to my homeland of Dundalk with my people rock and rollers. We’re gonna be a Costas on Thursday is all brought to you by the Maryland lottery some holiday cash drops to give away as well as some ravens scratch I’m have a handful of these left come on out the cost. It’s all brought to you by our friends at Goodwill and when donation 866 90 nation you buy two you get two free 0% financing. And in my place this is the first winter with new windows I’m very very pleased with myself. So in the course of human events, I cover a lot of things talk about a lot of things. I’ve done a lot of sports for a long, long time on the field off the baby let me in the press box on Sunday in Pittsburgh where I could do my job. Hopefully you read my column this this is a Baltimore Ravens story that came to me late last week. I don’t know a lot about it. I think we see the Ravens marketing and so many ways ravens down and they’ve used mo Gabicce name as part of their Baltimore thing MLR II in the endzone and they’ve had various blackouts and purple outs they have I go back as far as David Modell getting sued for the flying bee on the trademark back in the day. I still have my my ravens flying bee ski cap. I tell you what this came to me honest, I have a friend of a friend of a friend who knows Greg Stone who was a partner and co chair of intellectual property and technology section. I minored. At that at UB he is with white furred Taylor Preston, and was involved in it litigation the right thing to call this a great guy. I’m trying to figure out all of what happened around something that I thought to be like, if I would have thought I could have trademark Charm City, I may have gone out in a long time ago, huh?
01:54
Yeah, right, no doubt. But right now, we are not in the litigation phase. So we’re in what we call prosecution. Okay. And the terms get confused frequently. But among intellectual property practitioners in the IP world, prosecution is actually the application process at the Patent and Trademark Office. So on the patent side, you’ve got a new invention, somebody files an application, you’re marshaling that through that’s prosecution. Here, we’re talking about a trademark application at the USPTO. And it’s in that prosecution phase, which just means it’s going through the examination process.
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02:33
Start Me on I did go to UB but i i stayed away from the law classes i i saw how you smart guys operated over there. I was just trying to get out. Hatton and trademark explain all this to me. And what happened with Charm City as a term. And I can only think about like, the crazy hon lady that was trying to say I own the word on owning the term or the trademark for Charm City. I mean, this place has been called I don’t know, who coined it probably some writer HL Mencken or something 100 years ago, but what happened in this case to bring you to my audience, and what were the Ravens trying to do with the term Charm City.
03:20
So first, we’re only talking here about trademarks, which are different for patents.
03:26
You make the create something right,
03:28
8exactly. A patent is a new invention. A trademark is a brand. It’s an intellectual property, okay. Oh, it’s only intellectual property. But a trademark specifically is a brand. It’s a brand of a product. It’s a brand of a service. It’s the brand face that you’re putting out to the public, for whatever the product or services that you’re offering.
03:48
I call them our positive here right now. Right? Yeah, exactly.
03:52
That’s your brand. That’s your trademark Baltimore positive. Okay, so what the ravens are trying to do is lock up a trademark registration. I’ve got a copy of their application here. What they’re trying to do is lock up the term Charm City.
04:13
So in other words, have I called myself Charm City radio, the way 100.7 calls themselves the bay or Iwai calls themselves 98 Rock and I decided to call myself Charm City radio and by Charm City, it might be taken I don’t know. But if I wanted to, that would be like me saying Charm City, right, like in the way that they went after the wheelchair team that was called the Ravens 30 years ago, right?
804:38
Hey, essentially, yeah, if you’re just out there using Charm City, particularly for a service that relates to football, and so that’s part of the hook. The trademark that they’re after. It does link specifically to football but but a little bit more generalized in that they’re after it for posters and calendar. words that are related to football for magazines relating to football for flags, football flags for clothing that is football themed. Could
05:08
they just put Charm City? Nobody owns Charm City, right? Like, you can use that. And there are I mean, there’s all sorts of Charm City businesses, right? All sorts of businesses call themselves Charm City shoes and Trump say I’m sure there’s hundreds of those kinds of things, right.
05:23
So here’s where it really gets pretty interesting. Yes, you’re absolutely right, that there are loads of people out there that already use the term Charm City, and they use it for a bunch of different things. But at the Patent and Trademark Office, there are folks that have trademark registrations. They’ve gone through the process of filing an application and actually getting a registration. I’ll talk through what they are. But here’s some examples. Charm City cakes, Charm City Meade works, Charm City buyers, Charm City run charm, city soaps Charm City, burger company. All of these, believe it or not, are actually registered trademarks at the US Patent and Trademark Office. So these folks like Duff, the cake guy, filed a trademark application for Charm City cakes. And he got that trademark registration through and ultimately as a registration for the term Charm City cakes, all us together. So he’s got that registration.
06:31
8My buddy Josh has Charm city run, right? Like I buy my shoes for him, right? Like, I got these air last week, right? Like literally. So he’s already got he’s already in the charm. It’s that name on his door, right, literally, for all these businesses,
06:45
right and so to their mayor, but what ravens are saying is that we’re not trying to lock up Charm City altogether. We’re not trying to go out and prevent everybody from using the term Charm City. And in fact, the term Charm City generally does describe Baltimore, I don’t think anybody’s going to be able to argue that Charm City does not describe Baltimore. And so they’re not trying to prevent Baltimore businesses in general from using the term Charm City. They’re trying to get exclusivity to using the term Charm City as it relates to specific football related stuff. Football games, so entertainment services broadcasting relating to
07:32
stand Charm City and call Trump city defense or whatever and they could use that term at any what’s the benefit to having exclusivity other than trying to screw other people from using it and then saying from here forward, no one else can use Charm City toothbrush company or Charm City dentistry or whatever. The next thing that comes down the line that’s a duffer Joshua wants to open or Trump city radio in my case, right.
07:58
Right. Right. But but but that’s the whole reason anybody goes through the process of getting a trademark registration is to wrap up exclusivity and what that means is excluding other people from using whatever your mark is, in a way that would cause confusion out in the marketplace so let’s say that they’ve got Charm City Football hats baseball caps that are football team themed somehow right. And and they want to block Joe Schmo out there from selling football themed hats using the term Charm City because them doing so might tarnish the reputation that they now have wrapped up around their clothing line that has branded Charm City so yeah, you’re absolutely right it’s a ticket to court. It’s a right for them to go out and pound one other people for using that term Charm City for clothing for flags for posters and calendars and, and football games.
809:07
Who dreams this up at in the Ravens office? I mean, I don’t think folks it’s the marketing folks say if we own Charm City, we would be able to make more money. I I’m lost, right as a media member that got thrown out recently. I don’t know what the hell they’re thinking about lately, or who Bashaud he’s employing or but I’m trying to figure out where the real strength in this would be and in your role as an attorney in saying this will be like saying I own the word Baltimore kind of sorta right.
09:41
Well, and that’s the rub here. I mean, Charm City cakes. It’s not just Charm City its Charm City cakes. Charm City Mead works is those three words Charm City Mead works. So this one is a little bit of a bolder play by the Ravens because they’re going after a Again, it’s in the football realm specifically. But nonetheless, they’re going after the term Charm City if they were going after the term, Charm City Football, Charm City Game Day Charm City ravens, you know, something like that it would it would be a clearer picture than where they sit right now. But it’s really interesting that the way the examiner has positioned this case, this case right now, I’ve seen coverage of it. And everybody’s saying they’ve been rejected, they’ve been rejected, they’ve been rejected. While that’s true, there are statements in that action that came out from the trademark office that already gives them an out, it gives the Ravens a path forward. The trademark examiner has already said, and I’ll explain what this is, if you move your application from seeking registration on the principal register, which is the main thing you think of when you hear about a registered trademark, a registered trademark usually is referring to the principal register? Well, there’s another register that we call the supplemental register for more descriptive marks. Registration on a supplemental register is not as powerful as registration on the principal register, it doesn’t carry the same presumptions of validity, it just doesn’t carry the same strength. But it’s still a ticket to federal court. It’s still a trademark registration still lets you use that are in the circle telling the world this is my March. And the trademark examiner in this office action that came out has already told the Ravens if you move your application, from the principle register to the supplemental register, we’re going to allow it doesn’t mean that that it won’t come back and somebody else will throw a flag and say, You know what, Charm City is just way too descriptive. We’re not going to let you have that unless you had to turn football or something like that. But for right now, where this case stands, if they come back in and move their application to the supplemental register, and there are a couple things they have to do to do that. But if there if they move it to the supplemental register, this examiner has said that they’re going to allow that application to go through.
12:13
Bridgestone is here. He’s an attorney. I’m trying to be unconfused by this to some degree, Greg, and it was way for Taylor Preston as well. The supplemental part of this and getting this done, who is playing God? You keep saying referring to this examiner, I think at the old newspaper here, or the San Francisco Examiner, but what what who gets to decide who’s the Supreme Court of this thing?
12:39
8Yeah, well, the Supreme Court is the Supreme Court of this thing, ultimately, where it sits right now is it’s in front of and I’m calling them an examiner, but they are in fact an examining attorney at the US Patent and Trademark Office. So that’s someone that is a licensed attorney. They’re a governing government employee, they work at the US Patent and Trademark Office specifically won the trademark side as a trademark examining attorney. So it sits with that individual attorney right now. They’re going through the process. And again, if if ravens come back with that response, this examiner has said this examining attorney said they’re going to allow it to go through. Now if for some reason that examining attorney supervisor sees the case and says, You know what Charm City is, by itself just too descriptive. I’m not going to let it go through then that supervisor who has another attorney could say no, I think we need to issue an objection we need to hold fast not let it go through. If if they reject it and ravens want to fight on from there, it goes to a board of judges at the at the US Patent and Trademark Office for them to consider if they if they would lose it there it goes out to to a federal appeals court. And then from there, if they lose and want to keep fighting it, it would go potentially to the Supreme Court of the United States. But right now it’s in front of an attorney at the US Patent and Trademark Office.
14:10
Greg, you you went to school for this obviously you do this every day. Compare this to something that you’ve seen in a book or something that held or didn’t hold that this is really unique. I mean, it’s an interesting thing to talk about because like at any point right if a guy like me who’s all Baltimore all you know, I’m a Baltimore guy that if I would have dreamed this up or sharp guy like you would have came to me and said, Hey, man, you should you know, you Baltimore positive you should be Charm City positive and you should own the words Charm City. I’m trying to figure out how I mean, I’m a marketing guy. And I’m trying to figure out a way how I make dough on it be how I really stop other people from using it, or want to have the wherewithal to do that, that I’m making so much money that I’m I don’t want anybody else to have it. And it’s Something that is so not gent no one and Owings Mills came up with calling Baltimore Charm City and said, Let’s do this new thing, right? I’m trying to figure out other cases and in other jurisdictions or wherever, where something like this would happen, where you’re trying to grab on to something that already exists, that is not your creation or your intellectual prowess. I mean, Charm City should not be anybody’s intellectual property. It’s a term that’s used your buyer, it’s like, it’s like, when we fought hard. 10 years ago, we’re, there was a thought about, you want to own that expression? Like you can’t. Who’s gonna allow you to do that? Well, when the government’s gonna say yesterday,
15:44
right. And again, you know, they’re not looking to own Charm City per se. They’re looking to own the use of Charm City to promote football games, and to own it for the promotion of clothing that is football themed. So it is particularly that segment. And but this this issue, I see all the time of what we call geographic descriptiveness. And broader than that descriptiveness of trademarks, generally, trademarks exist on a spectrum really fanciful terms are very, very strong, and they’re pretty easily registerable. Nike, I don’t I don’t think it has an English translation. I don’t think the word in English Nike means anything. So because it’s a made up term, it’s a very, very strong and valuable mark. Whereas if I wanted to trademark the word computer, because I’m out there selling computers, the trademark office would not let me get a registration for that term, because I can’t stop the computer shop down the road from calling the computers that they sell a computer, assert
16:50
on the face of it. You know what I mean? That that word of it, right? Yeah.
816:53
Right. And so laying that descriptive this issue over the geography issue. Our trademark laws say that a term that is geographically descriptive, you know, life has problems as a trademark because we can’t prevent a Baltimore business or a Charm City business, because really, everybody knows Charm City means Baltimore, we can’t prevent a Baltimore business from calling itself a Baltimore business. So that’s why these other registrations are going through with an additional term on them Charm City cakes, Charm City, meatworks, Charm City buyers, et cetera. I’m surprised that this application that the Ravens have right now, that is just the words Charm City has gotten the indication that it’s gotten from the examiner that if you switch over to the supplemental register, you’ll be okay. We’ll let it we’ll let it sail through.
17:48
Yeah, it shouldn’t be that way. Right. You, you think that’s wrong?
17:52
I do. I think that is too broad. I think again, if they went after Charm City, football, Charm City, ravens, Charm City game day, they should be entitled to that registration, just the way these other folks have gotten registrations for, for another word in addition to Charm City. But just a term Charm City by itself, I think is Yeah, I think that’s a reach, I’m surprised to see the position of the examiner. And if it does go through, I would not be at all surprised to see one of these other owners of these other marks, raise their hand and say, oh, wait a minute.
18:33
8Well, this is what I was going to ask. Like if I wanted to open a donut shop tomorrow and call it Charm City donuts. I don’t know the charm, city cakes would have a case. But maybe if I opened a place, it’s called a Charm City track instead of Charm City shoes. And I don’t know where that really gets, you know, where you really bump up against something right? And you would have a problem. I would think in this case giving Han or Charm City or City of Brotherly Love or the word Chesapeake to somebody. It’s just, it feels to me to be like, it’s too ubiquitous for you to own it. It’s already it’s already in the public space. You can’t own that. It’d be like owning Santa Claus. You know what I mean? Like, you can’t do that.
19:17
Right? Exactly. And that’s why this one to me looks like such a reach. It is. I mean, St. Charm City is almost no different than saying Baltimore, you know, period. And so Baltimore cakes would presumably be registerable. Baltimore meatworks would be presumably registerable. But But without that additional word, I think this is I think it’s I think it’s a reach
19:43
thing. What if I started calling myself Trump city positive? Like seriously, like, I could do that right now. Like, whatever, but if they own it, they send the guy like you a little letter telling me to see and date. Right.
19:55
Well, it depends on where their registration ends up. Right. But but if they had John is the term Charm City. One of the services that they’re going after is entertainment services. And your and Baltimore positive. The program that you’re offering falls under that same class of goods or services. It’s entertainment services. So yeah, I would say if they have a Charm City registration for entertainment services, namely professional football games and exhibitions, fan clubs, they would at least have an argument to come after Charm City positive, Charm City radio, Charm City entertainment, because they have a registration for Charm City, in that class of services. I don’t know what kind of enemies they be making Balt. Right. They did it. But
820:49
how did you get involved in this? Greg? Right. By the way, Craig stone is our guest here. I want to certainly plug your firm, everybody know exactly what you do. Greg is the partner and co chair of intellectual property in the technology section right here in Baltimore, with white furred Taylor Preston, they’re in Baltimore, and they do all sorts of things. But what was your involvement to get involved in this and have your name into papers? They say,
21:12
well, and also just just to say, multigenerational Baltimore, myself, and happen to be a Ravens fan.
21:19
I knew I liked you.
21:22
8So, so yeah, actually, it’s this is this is just a case that’s gotten decent press. And this is something that creates a little bit of excitement in the trademark world. Sometimes it’s a little bit rare. It’s
21:37
a here you all are boring and stuff, you know, right, right.
21:41
But, but But nonetheless, it gets something that has this kind of precedent, and a lot of people are out there talking about it. And so and commenting on it’s just one that’s really got a lot of interest.
21:52
What’s the next step real quick, what happens next. So they were denied primary, but can be a part of this secondary supplemental. So I get to get the terminology Correct. What happens now.
822:05
So this action issued on December 6, so they have until March 6, to file a response, or file a request for a three month extension of time, but they’ll file a response. And they will argue their position back to the examining attorney. And the things that they can do there is art, it just switched the case over to the supplemental register, they’ll have to provide evidence that they’re actually using the mark now that they’ve got clothing out there that they’re promoting the games with, with the Charm City mark on them that they’re promoting branding with Charm City on it, but
22:46
they could do any of that anytime they wanted to. Right, but but they own it outright. I mean, he called Charm City game day in a heartbeat, right, but they want to trademark it first, and then utilize it correct?
22:57
Well, actually, they have to be using it. If they want to move to the supplemental register, this is a little hook in order to move it to the supplemental register, you have to be using it out in commerce first. So they would need to be out there with clothes that are branded Charm City, they would need to start on the broadcast, you know, having Trump city or inside the stadium or promotions for for the game, you don’t have to be using the term Charm City. But if they do that, in the next couple of months, they start that promotional effort, submit evidence of that use to the trademark office, they can switch it over to the supplemental register. And based on what this examiner has said that we’ll let them go through move forward the application process, essentially it would be approved by that examining attorney, if it gets to that point. And the examiner, the examining attorney has allowed that case, then it gets published. And it sits in this publication status for a period of 30 days. And the whole reason for that publication period is to let other folks members of the public who might be harmed by the grant in this registration to say, Ah, I have an interest in this term. And I am going to be harmed by you guys coming in and locking up exclusivity to the term, Charm City. And so I’m going to oppose your registration. And they get multiple people coming out and doing that because this is
24:24
8something an attorney like you get together and find 20 people that already have Charm City and saying, I’ll represent you so that the ravens are coming in here and usurping your ability to use your own brand. Right.
24:35
It’s certainly possible that we’ll see that, that people will pop up and say, No, I’m going to be harmed by this registration because I’ve been using Charm City in my business for the last 20 years. And I can have this registration grand into may now be be nixed by you by your existing registration. And so they could come in and oppose and there are different ways that that might be resolved with settlement between the ravens and and those other the other businesses that are out there basically agreeing we’re not going to sue and and you can continue on with your business. A lot could come with it or you get a big entity that comes in and just fights and says, Now we’re going to fight it tooth and nail and try to block this registration for coming out.
25:18
Right down here, informing me and entertaining me as well about all things of patents and trademarks. And, and the Ravens trying to own Charm City and a football for an actor. You’ve been a great guest man on ravens playing a little bit. Are you a believer? Do you believe they can win the Superbowl as a man? That’s the main question I’m asking because they are nine and four. Yep.
25:40
Good. Good performance yesterday. And yeah, you bet. I’m a believer. I am every year though.
825:48
You believe to COBOL right. We all did. It’s no problem. Craig, I appreciate you. Thanks for coming on and educating the audience. It’s a it’s a fascinating topic, and it certainly rubs right up against the ravens and you know, I’ve learned most of my life through sports so I should it should be no problem that I should learn trademark, you know, and have attorneys on talking about a football related trademark. So I appreciate you coming on. Good to have this. You’re
26:10
absolutely my pleasure. Really appreciate you having me on.
26:13
Hey, wait for Taylor print. What did they do? Tell me about your firm a little bit because I mean, I’ve known various people that have worked there. But I mean, you’re like a really full serve big deal. Top tower like law firm where serious people take serious matters, right? Yeah, yeah,
26:27
8we are a business law firm. We resolve all kinds of business issues for for companies that are to persist startups to Fortune 500 companies are about 180 Attorney General Practice Business Law Firm.
26:40
Give me my press credential back. Greg Stone is here. He’s in a white for Taylor Preston. I appreciate you have a great holiday.
26:47
Absolutely. You too. Thanks so much.
26:49 Cool. We are going to be doing the 31st anniversary of all the things we do around here on Thursday. We’re going to be a costus in Dundalk. I am going to ask the crab Imperial so I feel like a king. We’re going to be giving away some on Raven scratch offs as well as the holiday cash drop. Ross drop these off last week. Dennis Bailey’s had an unbelievable Baltimore David fade these on Friday with Dan Rodricks. had him on the crabcake tour. We’re bringing the crabcake tour to Dundalk this week at Constance saw brought to you by our friends at the Maryland lottery conjunction with our friends at Goodwill Industries as well as when donation 866 90 nation you buy two you get two free 0% financing. It’s a great it’s a better deal than even I got back in the summer. So I’ll take advantage of that. Get yourself a new windows my windows were 39 years old. They’re now about four months old. It’s much better. I am Nestor we are wn SDA and 1570, Towson Baltimore. We never stop talking Baltimore. Positive
