On December 4, 2008, Philadelphia Wine School sought to register the trademark SOMMELIER SMACKDOWN with the US Patent and Trademark Office (USPTO). On June 2, 2009, the mark was published by the USPTO for opposition, which means that any entity with superior rights to the school may oppose registration of the mark. On September 30, 2009, a lawyer the firm K&L Gates LLP of Pittsburg, PA, filed an opposition on behalf of World Wrestling Entertainment (WWE) asserting that the WWE does in fact have superior rights. In conjunction with this opposition proceeding, the firm also sent a cease-and-desist letter to the wine school, asking the school to stop use of the mark.
During an opposition proceeding, an opposer must usually show that the published mark, if registered, is likely to be confused with the mark(s) of the opposer. This requires a showing that the marks are confusingly similar and are used on similar goods and services. Here, because the WWE’s marks and the mark sought to be registered by the school are in overlapping international classes, and the marks are strikingly similar (both parties’ marks contain the word “smackdown”), the WWE will likely succeed in its opposition. The Philadelphia Wine School’s main defense to this opposition is the argument that the word “smackdown” is descriptive, is part of the public domain, and may not be appropriated exclusively to anyone.
I will quickly summarize World Wrestling Entertainment’s two trademarks that are germane to the instant issue. The first, WWE, is a non-descriptive term, and should be protected. If the Philadelphia Wine School wanted to call its wine tasting event “Sommelier WWE Smackdown,” then the WWE would certainly be justified in sending its cease and desist letter. In the case of the mark “WWE” being used, the Philadelphia Wine School is no longer describing the even it wishes to hold, but is clearly free riding on the well established WWE trademark – the initialism WWE has no meaning in many people’s minds except the meaning that World Wrestling Entertainment has affixed to it through years of advertising and holding events.
The second trademark at issue is “SMACKDOWN,” and is a descriptive, and arguably a generic term. While it may be true that World Wrestling Entertainment created the meaning for the word smackdown, the word is now part the lexicon of many people. If one looks up the term “smackdown” on GOOGLE, he will discover that it means “a confrontation between rivals or competitors.” Thus, when the Philadelphia Wine School uses the term in conjunction with the term “sommelier” (meaning, “[a] restaurant employee who orders and maintains the wines sold in the restaurant and usually has extensive knowledge about wine and food pairings.”), the school is trying to describe the events that will take place at the school – Sommelier Smackdown tells a prospective attendee that “[t]he Wine School’s Brian Freedman will be smacking down against Tom Pittakas, Beverage Director [and sommelier].”
Okay, back to the one argument that the Philadelphia Wine School may have – that the word “smackdown” is merely descriptive and not protectable subject matter of the Lanham Act. Courts do not like to appropriate descriptive words to private entities. However, as the WWE seems to be the entity that coined the term, they were able to trademark SMACKDOWN, and only after registration of the trademark did it become descriptive and arguably generic. Descriptiveness is a defense to an infringement action (like the WWE suing the Philadelphia Wine School) until the trademark becomes incontestable (which has not happened yet). Thus, the school would be justified in arguing that the WWE’s SMACKDOWN mark should be canceled because it is descriptive, or, in the alternative, the school could argue that a descriptive use such as SOMMELIER SMACKDOWN is a “fair use.”
The WWE’s cease and desist letter reminds this author of the preschools and kindergartens of the past that would use pictures of Superman and Mickey Mouse, but now often contain Harry Potter and the latest Disney characters. The owners of trademark rights and copyrights to these characters often pursue these quasi-commercial ventures even if the characters likenesses are used either to teach or to make children enthusiastic about learning. Thus, students who liked going to school because “that’s where Superman hangs out,” are now given less incentive to enjoy themselves.
At my law school, we have a professor who thinks that “anything a professor does” with copyrighted content is fair use – that is, anything within the scope of teaching. I agree with this statement and would increase its scope to include all teachers, not just professors. I do not think that licensing should be an issue when a teacher is making an agenda for a class. The average teacher does not have an intellectual property lawyer that can clear rights to a mark or to a copyrighted work. The law should not be used to stifle teaching.
So, while the WWE may have a legal right, or even duty, to stop the Philadelphia Wine School from using the mark SMACKDOWN, this author believes that the use should be allowed. Only time will tell who prevails in this situation, but from the looks of it, the WWE will win. The wine school’s defense of descriptiveness is weakened in light of the fact that four of the five registered marks containing the word “SMACKDOWN” belong to the WWE including “SMACKDOWN” used by itself. Readers may compare the marks, as they are reproduced herein.
