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When it comes to trademark lawsuits, the best defense is a good offense, Barstool Sports says

Our own Barstool Sports is suing a California company that claims it holds a trademark on the phrase "Back to Back World War Champs" before that company can sue Barstool.

Quintal International applied for a trademark on the phrase in 2013 and says Barstool's use of it on T-shirts is a violation for which Barstool owes lots of money and that if it doesn't pay up, Quintal will sue.

That's a complete smokescreen, our local self-described "satirical sports and men’s lifestyle blog" says, because it first started selling T-shirts with the phrase in 2012. In its suit, filed yesterday in US District Court in Boston, Barstool seeks to have a judge to order the cancellation of Quintal's trademark.

Barstool is the second company to file a preemptive federal lawsuit against Quintal. In a suit filed in March in US District Court in Fort Worth, Texas, Sheep Dog Market says Quintal should never have been awarded a trademark on the phrase, because it's been in use for years:

At issue is the ability of vendors to sell t-shirts and other goods which bear a common phrase, in this case, "BACK TO BACK WORLD WAR CHAMPS," which has been used ornamentally on clothing as a patriotic slogan for many years, long before Quintal registered it with the United States Patent and Trademark Office in mid-2013. ...

It is expected that during discovery, Quintal will be forced to admit that it has sent similar threatening letters to a large number of t-shirt vendors, and brow-beaten many of them into giving up their sales of the shirts or lose online third-party sales channels such as Zazzle, which do not want to get involved in a trademark dispute and be accused of contributing to infringement.

Quintal has yet to respond to either lawsuit.

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PDF icon Barstool complaint85.21 KB
PDF icon Sheep Dog complaint87.84 KB


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Comments

While I'm sure most of us don't have much love for barstool, companies like quinatal that bring lawsuits like this are trolls who should be laughed out of court. Just like patent trolls.

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Speak for yourself!

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I google searched and found the phrase in use at least as far back as 2010.
https://groups.google.com/d/msg/dc-capital/dRu-PceYN90/5tmspNEP4w0J

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On one hand, patent/trademark trolls have zero redeeming value to society. On the other hand, Bartsool has zero redeeming value to society.

Is there a way they can both lose?

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Barstool raised over $100k for the two police officers in NYC that were killed in the line of duty. Does that have any redeeming value?

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Over 200K for one of the marathon bombing victims.

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Trademarks are not subject to trolls quite the same way patents are. With trademarks, there's an application date for trademark registration, and there's another date for "first use in commerce". There's also a "use it or lose it" rule which patents don't have.

So even if you apply to register a mark in 2013, if you can demonstrate your first use in commerce was in 2009, then that can protect your exclusive (or at least nonexclusive) rights to use the mark.

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El Prez for mayor

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I am the attorney for Sheep Dog in the referenced suit.

First, I appreciate the mention.

Second, I strongly suspect that Quintal has contacted many dozens of small t-shirt printers - if anyone knows of any other victims of these bullies, please have them contact me.

Thanks!
Warren V. Norred, for Sheep Dog
[email protected]
www.norredlaw.com
817-704-3984

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