Accusations of trademark infringement can land even one of the most powerful entertainment companies in the world in a legal pickle. This week’s edition of the BL Business Branding series explores why a hometown summer baseball league was left feeling salty after the premiere of a new animated series on Disney+.
Earlier this month, the Portland Pickles Baseball Team sued the Walt Disney Company for trademark infringement and unfair competition following the release of its new animated series Win or Lose. The show follows the storylines of different players on a co-ed youth softball team named The Pickles. The Portland Pickles allege Disney violated its trademark rights by featuring a name and logo in the show, and on its corresponding merchandise, that are confusingly similar to the trademarked name and logo of the Portland Pickles.
Rose City Baseball, LLC, which does business as the Portland Pickles, owns a trademark for the name “Portland Pickles” and the team’s logo, which features a cartoon pickle wearing a baseball hat. Filed in 2017, the registered uses for both trademarks cover baseball game entertainment and clothing, including jerseys, shirts, hoodies, and other similar items. Disney’s fictional “Pickles” team in Win or Lose features a similar logo of a cartoon pickle wearing a hat and holding a baseball bat, and the alleged infringing merchandise features the logo on the same kinds of clothing.
According to USPTO filings, the Portland Pickles have used both marks commercially since 2015. Despite the baseball team’s long history of market presence, it claims that Disney’s massive reach and market power are causing “reverse confusion” among consumers, making them believe that authentic Portland Pickles merchandise is a Disney knockoff. The team says this confusion damages its ability to control its commercial reputation and its goodwill with customers.
The team also claims that it received numerous messages from consumers asking if it entered a licensing agreement with or sold its rights to Disney. This outreach, the lawsuit asserts, is evidence of actual confusion in the marketplace, bringing the claims of infringement out of theory and into reality. The team referred to this lawsuit as “a classic case of David vs. Goliath” as they go up against the House of Mouse.
The Portland Pickles did not name a specific monetary request for relief in their lawsuit. Instead, they requested that Disney be banned from “manufacturing, importing, advertising, marketing, promoting, supplying, distributing, offering for sale, or selling the good and/or services” that feature the pickle-related trademarks in question and be forced to pay the team all of the profits Disney earned from the streaming show and merchandise, along with damages and attorneys’ fees. This would, in effect, delete Win or Lose off Disney+ and pull much of the merchandise off the shelves at Target and other major retailers.
Disney has not yet responded to the lawsuit, which was filed in the U.S. District Court for the District of Oregon, Portland Division.
What Can Businesses Learn From This?
Even multinational media giants are subject to trademark infringement lawsuits, which is why businesses of all sizes must complete thorough trademark research early in the branding and development process. It is unusual to see a company as experienced as Disney exposed to this level of potential legal risk, all of which may have been avoided with a more thorough investigation with the USPTO as its new show was being created.
For the Portland Pickles, this lawsuit was an important step in enforcing its trademark protections, as failure to vigorously defend your marks could result in losing your rights to exclusive use. Furthermore, by including references to public outreach regarding questions about the team’s relationship with Disney, the lawsuit has started laying the groundwork to prove actual consumer confusion, which is a make-or-break component of an infringement claim, as we discussed in our recent Benefit v. e.l.f. newsletter.
Have questions about how trademark research and enforcement can help protect your brand? Contact our BL Trademark Team by reaching out to Seth Berenzweig at sberenzweig@berenzweiglaw.com today.