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Pee wee baseball team called out on trademark catch

A manufacturer’s balk at printing pee wee baseball uniforms with their name, "The 6" raises some unique questions around how trademark law is interpreted, says Toronto trademark lawyer Taras Kulish

Toronto Playground wanted to change its name to "The 6" and have it featured on their uniforms, but the shirt supplier and printer called foul saying they found it was trademarked, the Toronto Star reports. The supplier rejected the logo featuring the numeral 6 with a baseball in the ‘hole’: any variation of six (6) is trademark,” The Star reports. 

The team moved on and picked a new name and logo, but, Kulish, who also practises copyright law and is chair of the IP Department at Steinberg Title Hope and Israel, says it’s questionable if it was a fair call. 

At first, some thought rapper Drake was the trademark holder because he popularized the term, The 6, referring to Toronto’s 416 area code, the Star reports.

However, the article notes that entertainment lawyer Eb Reinbergs applied for the trademark on July 16, 2014, just two days after Drake coined the phrase by publicly saying his next album would be called Views from the 6.

“There was one opponent, Nike,” Kulish tells Advocatedaily.com. “But it looks like the opposition was resolved because the mark was officially registered in March 2016.”

Still, he says, while Reinbergs may have gotten on base, he hasn’t necessarily scored a home run.

“That’s because you have to ‘maintain’ your trademark and use it in association with the goods or services that were claimed in the application,” says Kulish. “In this case, it was registered for hats, shirts and other merchandise. I'm not sure if there are sales by the registrant of these items. I've looked and haven't found anything available online. I could be wrong about that. But if someone wanted to challenge the mark, they could file a s.45 challenge which would require the trademark registrant to show they have been using it on merchandise and doing business with it before the date you filed the challenge.”

If they haven’t been using it, he says, the trademark could be “vulnerable.” The challenge is built into the legislation in part to generally deter opportunists from seizing on something, trademarking it and then sitting back and selling to the highest bidder with no intent to use the trademark for any business purpose, Kulish explains.

What’s interesting about this registration, he says, is that it is different from the registrations made by Drake’s company, October’s Very Own, which the Toronto Star story says is “listed as the registrant for a bunch of Canadian trademarks and applications, including one on '6ix,' and another on the numeral six with a praying hands logo design attached to it.”

Curiously, says Kulish, Reinbergs, of Three60Legal, was quoted in another Drake-related trademark issue in the Toronto Star in January 2013.

In that story the issue was over the use of YOLO — You Only Live Once — which Drake claims to have also coined with his 2011 hit, The Motto. He sparked headlines in 2013 by tweeting demands that U.S. retailers Walgreens and Macy pay him a royalty when he spotted T-shirts and baseball caps emblazoned with YOLO. 

The story quoted Reinbergs — an independent source who was not representing Drake — saying the rapper would face challenges trying to trademark the expression on clothing.

“You can challenge it and say, I’ve used it before,” Reinbergs is quoted in the Star story. “But used it on what? Drake hasn’t used it on anything. You only live once. So register your trademark before somebody else does.”

Kulish says Reinbergs took his own advice to a degree, except for the question: "Was it really his mark to trademark – or Drake's?"

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