Bringing the Federal Trademark Registration Process to Life: Major League Baseball Expands to Portland

• Author: Nathaniel Grow
• Published date: 01 December 2020
• Date: 01 December 2020
• DOI: http://doi.org/10.1111/jlse.12100

Journal of Legal Studies Education

Volume 37, Issue 1, 37–52, Winter 2020

Bringing the Federal Trademark

Registration Process to Life: Major

League Baseball Expands to Portland

Nathaniel Grow∗

I. INTRODUCTION

Trademarks represent an important driver of firm profitability and brand

awareness1and, as such, are of growing interest to many business students.

At the same time, the trademark registration process represents an area of

the law in which nonlawyers are frequently able to successfully proceed on a

pro se basis.2Consequently, federal trademark registration is a topic ripe for

coverage in a variety of law-related classes taught in business schools, ranging

from the traditional legal environment and business law survey courses,3to

more specialized classes in intellectual property, marketing, and sports or

entertainment law.

This article presents an exercise that can be used to introduce both un-

dergraduate and graduate-level business students to the federal trademark

registration process,4while providing students with first-hand experience

∗Associate Professor of Business Law and Ethics, Kelley School of Business, Indiana University.

1See Alexander Krasnikov, Saurabh Mishra & David Orozco, Evaluating the Financial Impact of

Branding Using Trademarks:A Framework and Empirical Evidence,73J.M

KTG. 154, 155 (2009) (“Our

analysis confirms that both brand-identification and brand-association trademarks affect firms’

financial value.”).

2See Deborah R. Gerhardt & Jon P. McClanahan, Do Trademark Lawyers Matter?,16STAN.TECH.

L. REV. 583, 584 (2013) (finding that “42% of trademark applications filed by pro se applicants

ultimately” were registered, versus an “average attorney success rate [of] 60%”).

3Cf. Tammy W. Cowart & Wade M. Chumney, I Phone, YouPhone, We All Phone with iPhone: Trade-

mark Law and Ethics from an International and Domestic Perspective,28J.L

EGAL STUD.EDUC. 331,

331 (2011) (contending that “basic concepts of intellectual property are a natural component

in any business law or legal environment course”).

4Indeed, prior articles have frequently noted that active learning projects—such as the exercise

presented here—provide a highly effective means of teaching legal concepts to business students.

C2020The Authors

Journal of Legal Studies Education C2020Academy of Legal Studies in Business

37

38 Vol. 37 / The Jour nal of Legal Studies Education

undertaking the various steps involved in securing federal trademark protec-

tion. The exercise—based upon Major League Baseball’s (MLB) hypothetical

creation of an expansion franchise in Portland, Oregon—can take as little as

thirty minutes of class time but can also be expanded into a more involved

project potentially filling an entire class period and requiring students to

submit a piece of written work product. Consequently, the exercise can be

tailored in whatever manner an instructor sees fit, making it particularly

suitable for use in a variety of class settings.5

Specifically, the exercise requires students to analyze the likelihood

that Portland’s new baseball franchise would be able to secure federal trade-

mark protection for one of four potential team names. Depending on the

extent to which the instructor elects to implement the project in class, the

exercise enables students to gain experience (1) searching the federal trade-

mark database and assessing the likelihood of trademark registration, (2)

researching the various categories of goods and services for which trademark

protection is available, and (3) preparing a federal trademark application. As

a result, it provides students with a comprehensive survey of the trademark

application process.

The article proceeds in two parts. Part II presents a brief overview of

the federal trademark registration process, including the various procedures

and points of law most relevant to the exercise. Part III then introduces the

exercise, identifying three distinct parts of the project that instructors can

elect to implement in their courses.

II. THE FEDERAL TRADEMARK REGISTRATION PROCESS

In order to implement the present exercise in class, some familiarity with

trademark law and the trademark registration process is necessary. The

See, e.g., Carolyn Hotchkiss, Web Site Creation as an Active Learning Strategy in Business Law Classes,20

J. LEGAL STUD.EDUC. 235, 235 (2002) (“For many years, business law faculties have used a variety

of active learning strategies to engage students in learning law and to improve critical thinking

skills.”); Catherine Jones-Rikkers & Constance Jones, Active Learning in the Legal Environment of

Business Classroom,16J.L

EGAL STUD.EDUC. 173, 174 (1998) (“One important way of providing

students with ‘real life’ experiences in the classroom is active learning.”).

5The exercise introduced herein was originally developed for use in a course focused on the

business and law of the entertainment and sports industries with a typical enrollment of around

thirty students. As noted above, however, it is potentially suitable for use in a wide variety of

courses and class sizes.