Just in Time for IPO’s Annual Meeting in Chicago: The Official Top Ten CHICAGO Trademark Filings

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition

Foley Hoag LLP - Trademark, Copyright & Unfair Competition

In anticipation of our visit to Chicago next week for the Intellectual Property Owners Association’s Annual Meeting, we took a tour through the USPTO’s trademark database in search of Chicago-themed trademarks. Among marks consisting of the word CHICAGO and no other words, we found quite a few gems, including some whose histories illustrate interesting trademark issues. Unsurprisingly, many of these marks have faced resistance on the basis that they lack distinctiveness because they merely describe the geographic origin of the goods or services they seek to identify, but some of them also present other intriguing scenarios, and some are simply amusing. We humbly present, in no particular order, our top ten CHICAGO trademarks.

1.   Hometown baseball team the Chicago White Sox owns several registrations for this mark (and variations) covering clothing. Interestingly, the most recent application was filed on the same day as the application for the Chicago Cubs’ own stylized version of the name of their shared home, also covering clothing:

Neither application was cited against the other, and while the White Sox filed their application with a claim of acquired distinctiveness, the Cubs faced a refusal on grounds of geographic descriptiveness and had to amend their application to claim acquired distinctiveness based on use.

The White Sox’s script mark was, however, cited against the following mark for clothing (despite the fact that it features a basketball rather than a baseball). The applicant failed to respond to the Office Action, and the application was abandoned.

And the White Sox opposed the application to register the following mark for clothing:

The dispute appears to have been resolved by the addition of the following limitation to the mirror image mark’s identification of goods: “all of the foregoing not relating to baseball or softball or a baseball or softball team, league, mascot or stadium.” With that amendment, the White Sox withdrew their opposition, allowing the mark to proceed to registration on the Supplemental Register.

2.  This charming and lightly stylized logo owned by National Sporting Goods Corp. for roller skates features the old-timey convention of quoting one’s slogan or brand for emphasis, and is the subject of an active registration dating back to 1949 and claiming first use in 1906. The registration is based on acquired distinctiveness under Section 2(f). Curiously, this exact mark doesn’t seem to appear on the roller skates depicted in the most recent specimen accepted by the USPTO, though the curved CHICAGO text on the wheels of the skates appears to have been, as a trademark lawyer might say, substantially exact enough for government work.

3.   Dreis & Krump Manufacturing began using this mark in 1918 in connection with machines for forming and bending sheet metal, and registered it in 1955, based on a claim of acquired distinctiveness. Earlier this year, realizing that its stylized presentation of CHICAGO had changed over time (or perhaps that its old version looked more like CHICAGD), Dreis & Krump filed an application to register its updated logo:

This application is currently facing a pending Office Action refusing registration on grounds of geographic descriptiveness. However, the Examining Attorney helpfully notes that “applicant has been using its mark for a long time” and invites the applicant to overcome the refusal by adding a claim of acquired distinctiveness, which presumably it will do.

4.   L.A.B. Inc., a Canadian company, registered this logo back in 1991. While the stylized “A” in the logo at first glance looks like a pine tree, it actually appears to be a representation of the “cheesecake on a stick” identified in the Class 30 description. Interestingly, “CHICAGO” was disclaimed in this registration. While we don’t have the full USPTO record available, it may not be due to a geographic nexus, but because Chicago-style cheesecake (firm on the outside, soft on the inside) is apparently a thing. While this registration was canceled in 1997, we’re pleased to report that cheesecake on a stick appears to be alive and well, at least in Canada.

5.   A company based in Issaquah, Washington applied to register this mark for clothing in 2012. Although the application included a disclaimer of the word CHICAGO, it received an Office Action requiring a further disclaimer of “the descriptive design of the Chicago skyline.” In addition, the Office Action refused registration on grounds that he mark was primarily geographically deceptively misdescriptive. The Examining Attorney assumed that the goods would not originate in Chicago and concluded that consumers would mistakenly believe that they did because Chicago “is famous as a source of fashion.” In support of this somewhat surprising assertion, the Examining Attorney attached (1) a Wikipedia entry for “fashion capital” noting the growing importance of fashion in Chicago, among other cities; (2) a fashion website blog post titled “Chicago Fashion Capital of the World Rivaling Paris and Milan”; (3) a website called “Style Chicago” listing fashion boutiques in Chicago; and (4) a travel article listing Chicago’s Michigan Avenue as among America’s best shopping streets and calling Chicago “the fashion capital of the Midwest.” The applicant decided not to bother arguing against this impressive collection of evidence, and abandoned its application.

6.   Liberty Mutual Insurance Company applied to register this mark in 2014 in connection with insurance services and financial sponsorship of sporting and cultural events. Liberty Mutual fared better than the Washington fashion company, in that the PTO required disclaimer of the word CHICAGO but not of the depiction of the Chicago skyline. Liberty Mutual also appears to have escaped objection from the Chicago Theater, whose iconic marquee this design appears to evoke. However, after obtaining its Notice of Allowance, Liberty Mutual never filed a Statement of Use, and abandoned the application.

7.    An application to register this mark, which has the obvious look and feel of a top-level domain name, was filed by Chicago.com, Inc. in June 2012, right around the time of the initial new gTLD “gold rush.” Strangely, the gTLD application window was closed by this point, and neither the applicant nor anyone else had applied to register the .chicago domain. The trademark application identified hotel rate comparison and business information services related to Chicago, and curiously claimed a first use date of 2005, despite the fact that even its “current” specimen identified no real trademark use. The application was refused on several bases including geographic descriptiveness, failure to function as a mark, and the faulty specimen, and was not surprisingly abandoned in due course.

8.   The musical group Chicago owns a number of registrations for its band name, in both stylized and standard character form, covering musical recordings, entertainment services in the nature of musical performances, t-shirts, sheet music, song books, and posters. Most of these registrations date from the 1970s and claim use since the 1960s. In 1996, the band obtained a new registration for sound recordings that covers formats that have emerged as a result of the evolution of technology since the 1970s; while the original registrations cover only “phonograph records,” the more recent one also covers compact discs, audio cassettes, and video cassettes. Chicago also registered its design mark in the early 1980s for “belt buckles” but let the registration lapse in 2002 (perhaps trends rise and fall quickly in the fashion capital of the Midwest). Finally, in 1990 the band appears to have considered expanding its empire, and filed applications to register its mark in connection with “musical instruments, namely, trumpets and trombones.” The idea must have been short-lived, however, as the group never filed Statements of Use. Interestingly, among all of these registrations and applications, and despite the fact that the band Chicago does indeed hail from Chicago, only belt buckles had to rely on acquired distinctiveness; the rest are on the Principal Register as inherently distinctive.

9.  In 1996 the Illinois-based company Mission Kinetic, Inc. filed an application to register this CHICAGO basketball-themed logo, which loosely evokes the American flag (5 basketballs and 13 stripes!) in connection with apparel. The application was approved, but was opposed by Chicago Professional Sports Limited Partnership (a.k.a. the Chicago Bulls), resulting in a default judgment and eventual abandonment. You will not be surprised to learn that Chicago Professional Sports Limited Partnership is quite active before the Trademark Trial and Appeal Board, filing over a dozen opposition actions over the years (and has obtained many more extensions of time to oppose). However, this is the only CHICAGO-formative mark is has opposed. Despite the geographic nature of CHICAGO, the basketballs were clearly too close for comfort.

10.  Somewhat inexplicably, the Japan Travel Bureau International, Inc. applied to register this mark in 1993 in connection with campus bags, coffee mugs, aprons, shirts, golf hats, golf shirts, golf gloves, golf balls, and travel agency and sightseeing tour services. Was the plan to offer Blues Brothers-themed tours of Chicago to tourists from Japan, with associated merchandise as souvenirs? Sadly, we will never know; after disclaiming CHICAGO and obtaining a Notice of Allowance, the applicant abandoned the application by failing to file a Statement of Use.


All joking aside, we (Jenevieve Maerker and Josh Jarvis) are looking forward to returning to Chicago for IPO and to catching up with colleagues for discussions of trademark and copyright issues both lighthearted and serious. If you will be attending the conference, please say hello!

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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