American Pharoah’s Legacy Tested At Racetrack and USPTO

Nearly 6 weeks have passed since American Pharoah’s historic victory in the Belmont Stakes to become the first Triple Crown winner in 37 years. So what’s next for the racehorse with the famously misspelled name? Living a life of luxury on a horse farm as a stud? Not yet. He is set to return to racing in the August 2 Haskell Invitational at New Jersey’s Monmouth Park.

Via Sports Illustrated: American Pharoah’s legacy is in the balance at the Haskell Invitational.

There is no second act in sports quite like that of a Triple Crown winner returning to the races, a high risk, low reward encore in which the horse cannot exceed what he has already accomplished—at best he can validate it. He can become more valuable, but not significantly so. And he can get injured, or worse. American Pharoah’s owner, Ahmed Zayat, says, “Nobody can ever take away the fact that he is a Triple Crown winner,” and that is true. But every additional race that the colt runs could become the defeat that smudges his portrait.

American Pharoah also has his work cut out for him at the U.S. Patent and Trademark Office. Despite early signs of the horse’s brilliance, his owner – Zayat Stables – waited until after his Kentucky Derby win to file 6 federal trademark applications to protect its valuable brand. 16 days to be exact. If there is anything history has taught us, it’s that success breeds imitation. In this case, the filing delay allowed an opportunist named Azar Nuben to file a federal trademark application for AMERICAN PHARAOH for t-shirts first.

Even though Azar Nuben’s intentions leave a lot to be desired, he deserves some credit for using the correct spelling of the word “pharaoh.” Anyways, he claims first use of the trademark on November 7, 2014.

Zayat Stables filed a letter of protest with the USPTO after discovering Azar Nuben’s competing trademark application. A letter of protest is an informal procedure whereby third parties may bring to the attention of the USPTO evidence bearing on the registrability of a mark. The letter of protest procedure applies only to pending applications and is intended to aid in examination without causing undue delay and without compromising the integrity and objectivity of the examination process.

Zayat Stables’ letter of protest was accepted after it was determined that evidence of American Pharoah’s success on the racetrack may support a reasonable ground for refusal of the AMERICAN PHARAOH application. Therefore, the examining attorney assigned to Azar Nuben’s application is required to consider whether it should be refused due to a possible false connection with the racehorse.

To establish that Azar Nuben’s application falsely suggests a connection with American Pharoah, it must be shown that:

1. the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution;
2. the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;
3. the person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and
4. the fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed.

Last year, a similarly opportunistic federal trademark application for CALIFORNIA CHROME for jewelry and horseshoes was initially refused registration by the USPTO for falsely suggesting a connection with the famous racehorse. The application was abandoned because the applicant failed to respond to the rejection. I suspect that Azar Nuben’s application will meet a similar fate. However, if he can demonstrate that he was actually using the mark in November 2014, then he might be able to mount a credible defense. Stay tuned.

Not to beat a dead horse (pun intended), but this is yet another example of the problems brand owners face when they neglect to file federal trademark applications at the earliest possible opportunity. A lot of time and money could have been saved if Zayat Stables had filed its trademark applications during the weeks leading up to the Kentucky Derby (or even in the immediate aftermath). Considering that a federal trademark application can be filed on an “intent to use” basis for a few hundred dollars, there is no reason to delay taking such an important step towards protecting your brand.