The University of Chicago and pop culture and sports blog Barstool Sports resolved a trademark dispute before the United States Patent and Trademark Office (USPTO) in August. The dispute came about because the University and Barstool Sports had each filed trademark applications for media products with similar names.
On January 11, 2019, Barstool Sports filed a trademark application with the USPTO covering The Big Brain, a web series on which Barstool Sports founder Dave Portnoy and other guests evaluate, and potentially fund, start-up ventures. On May 1, 2019, UChicago applied for a trademark for Big Brains, a podcast produced by UChicago News since 2018 which features interviews with scholars at UChicago about their research.
According to public records, the USPTO notified the University of several issues preventing its application from being granted on July 15, 2019, including the conflict with Barstool’s application. The University submitted an amendment resolving the technical issues with the application on January 15, 2020, leaving the conflict as the only apparent obstacle to the USPTO granting the trademark for Big Brains.
The USPTO notified the University that its application would be suspended on July 17, 2020.
If a trademark application conflicts with an earlier-filed application for a similar mark, it can be suspended, meaning it cannot proceed until the conflict is resolved. This can happen in a number of ways: The prior-filed trademark may be granted, in which the second application will likely be rejected; the earlier application could be abandoned, allowing the second to proceed unimpeded; or the prior-filed application could itself be suspended for conflict with an even earlier trademark application. These situations can also be resolved if the later filer demonstrates that there is no basis for the conflict, or the parties can come to an agreement allowing the trademarks to coexist without conflicting.
While these proceedings were ongoing, the University was also working to resolve the conflict preventing its trademark application from proceeding. On July 11, 2019, the University filed an opposition to Barstool’s application with the USPTO Trademark Trial and Appeal Board. An opposition allows a party to officially seek to block another applicant’s trademark.
After nearly a year of negotiations between the University and Barstool, the parties submitted a motion to the Board on June 30 to resolve the matter by amending Barstool’s application to exclude podcasts from its trademark and withdraw the University’s objection.
In an email to The Maroon, University spokesperson Gerald McSwiggan said, “The University agreed to a trademark settlement with Barstool Sports, Inc., a common procedure in trademark law. The terms of the settlement are not public, but there was no financial element to the agreement and the University will continue to use the Big Brains brand.”
Because this agreement clarified that each trademark would apply to a different product, the Board dismissed the University’s opposition on August 24.
According to the USPTO website, UChicago’s application remains suspended and Barstool’s is pending approval as of Monday, September 21.