The Toronto Maple Leafs Face-Off Against Snoop Dogg

June, 2016

Maple Leafs Sports & Entertainment Partnership, the company connected to the Toronto Maple Leafs, the Toronto Raptors, and other professional sports teams is best known for the battles its teams engage in.

This time however MLSE finds itself squared off against a very unlikely opponent in Calvin Broadus. Broadus is better known to the world as Snoop Dogg, a pioneer in rap music, and one of the most high profile unofficial ambassadors for marijuana and related products.

It is because both parties are claiming a right to use the word LEAFS and a logo of a leaf that they have come into conflict with one another.

Leafs by Snoop

Calvin Broadus has filed at least two trademark applications in the United States Patent and Trademark Office which include the phrase LEAFS BY SNOOP. One of the applications is for the simple word phrase while the other is for a logo design consisting of a seven pointed leaf over which the words LEAFS BY SNOOP appear in three separate respective rows in descending order. To date, MLSE has made a filing to stop the application for the logo application so that it can more fully set out its arguments for why the application should not be allowed. (MLSE is not yet able to make a filing to stop the application simply for the words LEAFS BY SNOOP.)

For both applications Snoop Dogg is only attempting to register LEAFS BY SNOOP in word and logo format in association with “Cigarette lighters not made of precious metals.”

The Toronto Maple Leafs

The Toronto Maple Leafs through various corporations and structures owns many registered trademarks in the USPTO. There are several registrations for LEAFS, some for MAPLE LEAFS, and several for the logo of the team in different variations. Most of the trademarks are registered in association with “ice hockey exhibitions” while others are registered with various clothing articles, like jerseys, caps, and even robes and cloth bibs. (There may be other registrations the Toronto Maple Leafs have in the USPTO; I cannot be certain I found them all.)

The Challenge

In order to successfully block Snoop Dogg’s trademark application, MLSE is going to have to prove it has superior rights. Some grounds the MLSE may allege in the hopes of blocking the trademark applications are: (i) Snoop Dogg’s trademark is confusing with any of MLSE’s registered trademarks; (ii) MLSE registered its trademarks before Snoop Dogg applied for his confusing marks; (iii) Snoop Dog adopted his trademarks in bad faith in the hope of trading on the goodwill already present in MLSE’s registered trademarks, especially the LEAFS trademark registrations; and (iv) the MLSE trademarks constitute a family of trademarks and are famous and for that reason have a wider ambit of protection upon which Snoop Dogg’s applications intrude; permitting Snoop Dogg to register his trademarks will unfairly dilute the value in MLSE’s registered trademarks. (In Canada the doctrine of famous trademarks is not entirely clear or as advanced as in the U.S.; that said, several Canadian court decisions have communicated a willingness to recognize famous marks and a consequent wider ambit of protection.)

Interesting Note

So far, Snoop Dogg has only applied for LEAFS BY SNOOP with cigarette lighters. If MLSE has not protected its various registered trademarks with cigarette lighters, then Snoop has a chance to get his applications past the objections of MLSE. However, what if Snoop wanted to add jerseys, sweaters, caps, or some other clothing article to the applications for LEAFS BY SNOOP? Surely if the LEAFS BY SNOOP logo, which bears some resemblance to the Toronto Maple Leafs logo, were to appear on clothing, some people would purchase and wear that clothing to hockey games of the professional sports team. That would certainly hurt the sales of MLSE merchandise.

Conclusion

MLSE is not going to let Snoop register his trademarks without throwing a few body checks his way. If Snoop can deke his applications for use with cigarette lighters past MLSE’s defence, it would not be surprising to see him file new applications (or amend the current ones) to include articles of clothing. If that happens, you can be certain MLSE will be fighting him as hard as a team in Game 7 of the Stanley Cup final.

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Ryan K. Smith is a Lawyer and Trade-mark Agent at Feltmate Delibato Heagle LLP. He is a corporate and commercial lawyer with expertise in all manner of intellectual property matters including trade-marks, copyrights, domain names, and confidential information. You can reach Mr. Smith at (905) 287-2215 and rsmith@fdhlawyers.com