Baseball Equipment Makers In Trademark Spat Over The Word 'Diamond'
from the play-ball dept
Everyone should know by now that language is ever evolving. New, cultural, or colloquial words get added to the dictionary. In addition, existing words attain new definitions, typically contextual definitions. Like the word “diamond”, for instance, which has a different definition when spoken in the context of baseball. In baseball lingo, the diamond is in the filed, or infield, and the term is as common as “bat”, or “ball”, or “single.” And, yet, two makers of baseball equipment are now in a trademark legal spat over the word “diamond.”
Cooperstown Bat Co. has asked U.S. Magistrate Judge David Peebles to declare that its use of “Pro Diamond” on its bats doesn’t infringe on the trademark of a California sports-equipment manufacturer. Cooperstown Bat Co. sued Diamond Baseball Co. in federal court in Syracuse in response to Diamond Baseballs’ demand that Cooperstown Bat stop using the name. Diamond Baseball sent a “cease and desist” letter to Cooperstown Bat in December, demanding that it remove “Pro Diamond” from its web site and send all of its bats with that mark on it to Diamond for destruction.
Complicating this is that Major League Baseball has a rule for bat manufacturers that an ink dot must be on any bat constructed of maple or birch wood, in order that players and teams can better see the quality of the wood grains, which is an indication of the strength of the wood. Cooperstown Bat began using a diamond for its ink dot because, again, baseball. Shortly after, Cooperstown Bat began marketing these professional grade wooden bats under the “Pro Diamond” brand, after which Diamond Baseball sent out its C&D notices.
But, in the context of baseball, how in the world is “diamond” not generic? Cooperstown Bats brings this up in its filing.
“The word ‘diamond’ has been used generically to refer to a baseball field, and more specifically, the four-cornered part of a baseball field in which the corners are the three bases and the home plate, for well over 100 years,” Cooperstown Bat’s lawsuit said.
Adding to the silliness of this is that the two companies don’t even make the same equipment. Cooperstown Bats makes — you guessed it — baseball bats. It also sells a few accessories and apparel as well, but it’s a baseball bat company. Diamond Baseball makes baseballs, softballs and catchers gear. Both are in the baseball business, but they don’t make the same products and, again, in the baseball business the word “diamond” is as generic as “field.”
It’s high time the trademark office began a stricter policy on these types of generic marks. Sadly, we’ve seen little to indicate its willingness to do so.
Comments on “Baseball Equipment Makers In Trademark Spat Over The Word 'Diamond'”
This case
This lawsuit is a diamond case
Can we call this...
…convincing evidence of our IP ownership society gone mad?
Oh and..
Isn’t the term diamond, referring to the four bases, the lines linking them and the immediate area around them, used in the official rulebook?
You Americans are weird!
You put a rhombus on your bats and think they are diamonds…
oh wait!
Cooperstown Bats makes — you guessed it — baseball bats. It also sells a few accessories and apparel as well, but it’s a baseball bat company. Diamond Baseball makes baseballs, softballs and catchers gear. Both are in the baseball business, but they don’t make the same products and, again, in the baseball business the word “diamond” is as generic as “field.”
OMG, Tim. Why in the world does Mike let you write about trademark law when it’s so abundantly clear that you don’t understand even the most basic of concepts? “Diamond” would be generic if they were selling diamonds, but they’re not selling diamonds. A bat is not a diamond. A baseball is not a diamond. It’s not generic. Moreover, two companies selling different, but related, goods under the same mark can be trademark infringement because there can be a likelihood of confusion. This is basic, first day, trademark law 101. You really need to step back from the “trademark dumb!” urge and actually learn some trademark law. You’re just embarrassing Mike with this stuff.
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I can agree that they are both in the same business since they both manufacture ‘sporting goods’ I’ll give you that.
But in baseball related goods ‘diamond’ IS generic.
Just like ‘ring’ is generic in the boxing business.
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Hmm… someone ought to invent a baseball/boxing hybrid sport that is played inside a diamond ring!
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A generic term in the parlance of trademark law is one that is commonly used to describe an object or a service. I daresay that no sports broadcasters routinely call what baseball pitchers toss as “diamonds”, just like I rather doubt boxing announcers refer to what boxers place over their hands as “rings”.
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Yes, I’m an idiot who can’t do trademark 101 because I side with a filing by a company, undoubtedly drafted by a lawyer who DID take trademark 101, arguing specifically that “diamond” is generic for the purposes of the baseball industry.
Yawn….
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Are you legally retarded? Cause I’d hate to make fun of someone who actually has a mental defect.
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Actually, his points as they relate to trademark law are well made. It is the author of the article who misunderstands the term “generic” as it applies within trademark law.
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His point may or may not be correct, but it is certainly not well made.
Generic / Descriptive / Suggestive / Arbitrary / Coined
This might help. DIAMOND would be generic for jewelry, descriptive for equipment used to line or maintain baseball fields, suggestive for baseball equipment like bats, balls and uniforms, and arbitrary for something like smartphones or auto parts.
Generic:
SMARTPHONE – for mobile communication devices
LAPTOP – for small computers
CLOCK – for timepieces
GRIDIRON – for metal grills
Descriptive:
CHAPSTICK – for lip balm
FRESH ROAST – for coffee
COLD AND CREAMY – for ice cream
COPPERTONE – for sun block
TASTY – for bread
SHARP – for televisions
Suggestive:
Greyhound – for transportation
Rent-A-Wreck – for car rental
AIRBUS – for airplanes
GRIDIRON – for football helmets
Chicken of the Sea – for tuna
Arbitrary:
CAMEL – for cigarettes
APPLE – for computers, etc.
Coined:
KODAK
EXXON
Common Sense IS a Commodity
If I could, I would buy out both companies and merge them and use the term Pro Diamond whenever I damn well choose.
Cooperstown Bat has the right to use a generic term in their advertising of their brand. That is exactly why the courts will most likely rule against them. Common sense is a commodity not freely passed out by judicial circles these days and you have to invest heavily in order to see any return in your investment.
Re: Common Sense IS a Commodity
Cooperstown Bat is using PRO DIAMOND to identify a brand of bat. DIAMOND may be descriptive, more likely suggestive, of the products sold by DIAMOND Sports, but DIAMOND Sport’s years of use of the trademark has created secondary meaning in the brand for those people who purchase sports equipment, thus serving as an identifier of source and entitled to protection as a brand.
I hate to be the one to say this but “diamond” is a generic term. Why isn’t the Diamond Baseball Co. suing diamond retailers, producers and distributors. How the hell the word “diamond” was trademarked is beyond me. Why the courts are entertaining this is beyond me.