By: Zack Stacy
Shakespeare's Juliet famously said: "What's in a name? That which we call a rose by any other name would smell as sweet."[i] In the competitive world of horse racing, these words ring true.[ii] American Pharoah and Justify, Kentucky racehorses, would retain their speed, endurance, and poise to win a Triple Crown had their names been Slow Poke and Tortoise.[iii] This does not mean creative and increasingly outrageous horse names are without value because American Pharoah and Justify are more than just racehorses; they are brands.[iv] With an effective trademark strategy, these horses could result in highly lucrative licensing opportunities especially due to the much-anticipated NFT “Party Horses” relying upon artist renderings of horses.[v] It is now prudent as ever to understand the world of horse names and trademarks.[vi] While criticisms exist on the lack of enforceability of horse-related trademarks, with a proper strategy though, a horse trademark can have a broad application.[vii]
For a horse to be eligible for the Kentucky Derby, Preakness, or Belmont, a horse must meet several requirements.[viii] The first is thoroughbred name registration through The Jockey Club®.[ix] To be eligible for registration, among several other requirements, genetic typing, parentage qualification and calculation of gestation period of the horse have to be proven.[x] “When the owner of a newly born thoroughbred submits the foal for registration, they must submit name selections in order of preference.”[xi]
The registration of a name through The Jockey Club is quite similar to the registration of a name through the U.S. Patent and Trademark Office [USPTO].[xii] Like with trademark registries, the proper grants, and recordation of thoroughbred names are vitally important to maintaining the integrity of the breed.[xiii] Like enforcing active, and pending USPTO trademarks, the Jockey Club restricts the use of “names that are currently active” or the names of any horses that have won a grade one stakes race within the past 25 years.[xiv] Examples of the first three of the seventeen restricted criteria for horse names by The Jockey Club are:
“1. Names consisting of more than 18 letters (spaces and punctuation marks count as letters);
2. Names consisting entirely of initials, such as C.O.D., F.O.B., etc.;
3. Names ending in "filly," "colt," "stud," "mare," "stallion," or any similar horse-related term;”[xv]
The Jockey Club’s naming guidelines establish a solid framework for a trademarkable name.[xvi] A missing criterion in the Jockey Club guidelines that is essential for the USPTO trademark process is “descriptiveness.”[xvii] A case study concerning this matter is California Chrome, 2014’s Horse of the Year, and the winner of that year’s Kentucky Derby and Preakness Stakes.[xviii] The word “chrome” is equestrian jargon for white markings on a horse’s pelt – something California Chrome has plenty of.[xix] Although the trademark went through successfully, descriptiveness remains something to consider when establishing a trademarkable name.[xx]
Another vital aspect of trademarks that must be proven and is considered one of the foremost pieces during the trademark prosecution is that the mark is active in the stream of commerce or that there is a bona fide intent.[xxi] If a horse owner is not actually using the horse to sell a product or service, there is not an argument for trademark registration.[xxii] In Thoroughbred Legends, LLC v. Walt Disney Co., the court granted summary judgment for defendants, holding that the plaintiffs failed to state claims for trademark infringement when their trademark for the historical horse Ruffian was used in a movie.[xxiii] “Plaintiffs fail to show that the alleged ‘RUFFIAN’ mark was in fact ever used to signify origin to customers and competitors.”[xxiv] Thoroughbred Legends failed to establish its trademark in the stream of commerce for movie use.[xxv] Therefore it was unenforceable.[xxvi]
The intention of trademarks is also to prevent consumer confusion between similar products and names, which is why there can be the same name producing different products (i.e., Delta Airlines, Delta Faucets, Delta Dental).[xxvii] For a trademark to be enforceable against a product, the trademark must be used or have the intention to be.[xxviii] A trademark that is merely registered is unenforceable.[xxix] When the horse owners applied for the California Chrome trademark, their application indicated its use on merchandise (“shirts, pants, jackets, [shoes], and hats”).[xxx] It did not infringe on an existing Kentucky “California Chrome” trademark about automobile accessories, but to be enforceable, the owners of the mark had to produce or license the trademark on merchandise which is beneficial for horse trademarks.[xxxi] Trademark applications can be narrow enough to avoid infringing on existing marks but broad enough to be enforceable.
This enforceability problem becomes trickier when applied to NFTs like “Party Horses.”[xxxii] If an NFT were to use the “California Chrome” trademark, the trademark holder would have to establish that it protects against the NFT and is in the stream of commerce.[xxxiii] This further highlights the importance of viewing horse names as a brand. Enforceable trademarks increase the value of the underlying IP asset and increase licensing opportunities.[xxxiv] To further this enforceability, (1) trademark applications need to be as broad as possible to cover potential infringers without infringing themselves, and (2) horse owners need to deliberately enter the stream of commerce by whichever means possible. In short, the clear solution is to file a trademark for the horse and make an Etsy store.
[i] William Shakespeare, Act 2, Scene 2, in The Tragedy of Romeo and Juliet 71–71 (Barbara A Mowat & Paul Werstine eds., 2018).
[ii] See Christina Moore, Beginner’s Guide to the Triple Crown America's Best Racing, America’s Best Racing (Apr. 17, 2021), https://www.americasbestracing.net/the-sport/2021-beginners-guide-the-triple-crown [https://perma.cc/LVJ6-8ERZ].
[iii] Id.
[iv]Id.
[v] Haley Cawthon, Horse racing, bourbon and ... NFTs? Inside the plan to put Louisville on the map for web3, KYINNO (Jan. 24, 2022, 2:23 PM), https://www.bizjournals.com/louisville/inno/stories/news/2022/01/24/party-horses-nft-launch.html [https://perma.cc/D5VE-BN4E].
[vi] See Id.
[vii] Tiffany Blofield & Steven Katleman, Intellectual Property and its Value to Riders, Owners and Others in the Equestrian Industry, Greenberg Traurig, LLP (Mar. 15, 2021), https://f.datasrvr.com/fr1/421/92820/IPs_and_Its_Value_to_the_Equine_Industry_FINAL.pdf?cbcachex=381254 [https://perma.cc/RV6W-XNWJ].
[viii] The Jockey Club, American Stud Book Principal Rules and Requirements, 10-18 (2020).
[ix] Julie Alderman, Ahead Of The Kentucky Derby, 5 Absurd Rules For Naming Racehorses, Nat’l Pub. Radio (May 1, 2015, 4:01 PM) https://www.npr.org/sections/thetwo-way/2015/05/01/403585608/ahead-of-the-kentucky-derby-5-absurd-rules-for-naming-racehorses [https://perma.cc/B68E-XDAR].
[x] The Jockey Club, supra note viii at 11 – 13.
[xi] Monica Ugliuzza, Trademarking Horses - Yeah or Neigh?, Creative L. Studio (Apr. 30, 2019), https://www.creativelawstudio.com/post/trademarking-horses-yeah-or-neigh [https://perma.cc/UVT3-K9GU].
[xii] Id.
[xiii] Id.
[xiv] The Jockey Club, supra note viii at 17.
[xv] Id. at 16 - 17.
[xvi] Id.; See 15 U.S.C. §1051(a).
[xvii] B&B Hardware v. Hargis Indus., 575 U.S. 138, 142 (2015).; The Jockey Club, supra note viii 1-41.
[xviii] Amanda Duckworth, California Chrome Was a Winner, but What About His Kids?, N.Y. TImes (Mar. 29, 2018) https://www.nytimes.com/2018/03/29/sports/horse-racing/california-chrome-stallion-breeding-dubai.html [https://perma.cc/AL92-2EXG ].
[xix] Id.
[xx] B&B Hardware v. Hargis Indus., 575 U.S. 138, 142 (2015).; The Jockey Club, supra note viii 1 – 41.; CALIFORNIA CHROME, Registration No. 4750786.
[xxi] Aini v. Sun Taiyang Co., Ltd., 964 F. Supp. 762, 773 (S.D.N.Y. 1997).; 37 C.F.R. §2.34(a)(2).
[xxii] 37 C.F.R. §§2.2(k)(1), 2.32(a)(5), 2.34(a)(2)
[xxiii] Thoroughbred Legends, LLC v. Walt Disney Co., 2008 U.S. Dist. LEXIS 19960, 12 (N.D. Ga. Feb. 12, 2008).
[xxiv] Id. at 12, 14
[xxv] Id.
[xxvi] Id.
[xxvii] B&B Hardware, 575 U.S. at 142.; Make a Name for Yourself, Beyond Arc, https://beyondthearc.com/blog/2015/customer-experience/make-a-name-for-yourself (last visitedMar. 8, 2022) [https://perma.cc/BTF5-6KEZ].
[xxviii] 37 C.F.R. §2.34(a)(1)(i). See TMEP §§804-804.05 regarding verification.
[xxix] See 37 C.F.R., supra note xxii.
[xxx] CALIFORNIA CHROME, supra note xx.
[xxxi] Id.; CALIFORNIA CHROME, Registration No. 3521430.
[xxxii] Quynh La, Bully No More: Why Trademark Owners Engage in Trademark Overreach and How to Prevent It, 96 Wash. L. Rev. 667, 677 (2021); Cawthon, supra note v.
[xxxiii] See 37 C.F.R. §§2.2(k)(1), 2.34(a)(1)(i).
[xxxiv] Kenneth L. Port, The commodification of trademarks: Some final thoughts on trademark dilution, Hofstra L. Rev. 669, 673 (2017).