CWHL may have use for NWHL trademark

The CWHL and the Ontario Women’s Hockey Association (OWHA) have filed a challenge to the NWHL’s trademark of “NWHL,” which could mean further legal obstacles to the U.S.-based league that has so recently found itself mired in conflict.

This could be quite a barrier to the NWHL’s supposed foray into Canada, making it difficult for the league to sell goods, put on hockey games and even hold development camps.

Today’s Slapshot has reached out to the NWHL for comment on the trademark challenge and will update when warranted.

Before this iteration of the NWHL came into being, there was another National Women’s Hockey League, which dissolved in 2007 after an unsuccessful eight-year run. Some surviving parts of the NWHL joined the CWHL and a new league was born, which, eight years later, held its own against outside competition in the form of the U.S.-based NWHL.

The initial NWHL trademark, once applied for by the OWHA, was abandoned by the association in 2004. Its trademark covered the basic logo, name, women’s hockey games as well as the sale of paper and printed goods, clothing, footwear, headgear, games, toys, sports equipment and educational activities under the NWHL name and brand.

Now the newest NWHL has filed an application for the same mark covering the sale of “souvenirs, namely, hockey pucks, hockey sticks, hockey bags, game programs, key chains; clothing, namely, sweaters, t-shirts, jackets, sweatshirts, scarves, hats, caps, hockey jerseys” and “entertainment in the nature of hockey games.” Also included in the trademark application are precious metals and jewellery, paper and printed goods, clothing, footwear, headgear, games, toys and sports equipment and educational activities under the NWHL name and brand.

The NWHL submitted its application to the Canadian Intellectual Property Office on March 27, 2015, the day after Rylan’s league was announced in Puck Daddy, The Hockey News and various and sundry other sites or publications.

In contrast, the NWHL registered its trademark in the U.S. Feb. 2, 2015, and registered January 12, 2016. However it is not uncommon for trademarks to be registered earlier in the country of origin than another; the CWHL only trademarked its name in the U.S. in November of 2015 while it the league trademarked its name in Canada in April of the same year, although it was used in Canada since 2007.

Trademarks do not need to be registered in Canada, but doing so guarantees that a certain mark belongs solely to the user. Trademarks can be renewed every 15 years after registering it with the Register of Trademarks. The Canadian Intellectual Property Office explains:

Registration is direct evidence that you own the trademark. (In a dispute, the registered owner does not have to prove they own the trademark; the duty is on the challenger.)

You do not have to register your trademark; by using a trademark for a certain length of time, you can come to own it according to common law. However, if you use an unregistered trademark and end up in a dispute, you could be looking at a long, expensive legal battle over who has the right to use it. If you fail to actually use the mark for a long time, your registration may be taken off of the Register of Trademarks, which will make it more difficult to prove legal ownership of the trademark.

It is a typical business practice to register a trademark in both countries, particularly when an organization plans to have a presence in both, something NWHL Commissioner Dani Rylan indicated she looked forward to.

The NWHL teased expansion teams in Canada during a broadcast of the inaugural Isobel Cup Final held March 12, 2016. The teaser consisted of a map of the northeast corner of the U.S. and Canada with markers placed on the map to indicate its four U.S. teams. The graphic then showed two more markers added, situated in what appeared to be Montreal and Toronto, where three separate CWHL franchises – the CWHL’s flagship franchises – are located.

NWHL Expansion Teaser from the Isobel Cup Series, Game 2, Boston vs Buffalo. March 12, 2016. Screenshot from NWHL YouTube stream.

In Canadian intellectual property law, trademarks can not be challenged until they are advertised; the NWHL trademark was advertised by the Canadian Intellectual Property Office on Jan. 27, 2016.

The CWHL and OWHA’s challenge was not filed until April 7, 2016, close to a month after the NWHL raised eyebrows and perked up ears with talk of possible expansion.

Should the CWHL and OWHA’s trademark challenge succeed, Rylan and the NWHL may find themselves in a nasty dispute over the mark or the league might be locked out of Canada under that particular name. Brand identification is key to a business looking to build an identity of its own and separate itself from its competitors.

A legal expert familiar with trademark law told Today’s Slapshot that the abandonment of the NWHL trademark by the OWHA is not applicable as the association only applied for the mark and never reached the registration stage. Additionally, should the CWHL and OWHA try to claim that the NWHL registering this mark in Canada could result in consumer confusion, given that there has been no use of the logo since 2007 the likelihood of confusion is very small.

Although an opposition is a proceeding within the Canadian Trademark Opposition Board, a party will need to show potential injury, putting the onus on the CWHL and OWHA to prove the mark should not be registered by the U.S. organization.

Director of Communications and Marketing for the CWHL, Sasky Stewart, responded to Today’s Slapshot‘s request for comment on the matter.

“The CWHL and OHWA’s trademark contestation is standard business practice to ensure the protection of our league and associations brand which has long been associated with the NWHL name here in Canada,” Stewart said.

The challenge, though, may go beyond standard business practices.

A source close to the CWHL tells Today’s Slapshot that the league had been in discussions with the OWHA to take ownership of the NWHL name to better reflect the league’s North American aspirations, significantly prior to the appearance of the new NWHL. The source speculated that the mark would likely be given in exchange for commitments to aid in youth programming.

Whether a name change is still a focus of the CWHL’s is uncertain, but lessening the nationalism of their branding could help to get U.S. players back on board with the league, many of whom felt overlooked, frustrated and even disrespected by the distinctly Canadian bend to the league’s identity, as well as a lack of funding and marketing in past seasons.

It would also aid in international marketing.

Although a name change would be a big undertaking, requiring rebranding and a significant campaign marketed towards current and new fans, a more neutral name would put the CWHL in the same category as the NBA, NHL, NFL and more, simply by association.

Should the challenge be successful and the CWHL sincerely interested in a name change, can the NWHL mark be successful for a third league, or has it worn out its welcome?

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