An Arizona man has registered a number of trade names with the state of Arizona, including Phx Suns, Phx Cardinals, AZ Diamondbacks, and … Arizona Coyotes. The problem is that the Phoenix Coyotes hockey team (yes, there is ice hockey in Phoenix) recently announced their name change to Arizona Coyotes – a team name for which (it turns out) they do not hold the trademark.
Original Article in AZCentral (with video)
This same man had registered the name “Phoenix Open” with the Arizona Secretary of State, but dropped it when sued by the sponsors of the tournament. Sued? It turns out that under the law, it’s not as simple as just beating someone to registration and then forcing them to negotiate. The courts also look at your association with the trade name (in this case, apparently no association) and the likelihood that consumers would be confused. These kinds of matters get litigated.
There can be legitimate conflicting claims on a trade name, and they are sometimes subtle and difficult to sort out. The smaller party is not necessarily trying to exploit the larger – that’s not the only narrative that fits these facts. But before you plan your business around trade names, get the advice of a good IP law firm.