Sports

This Trademark Fight Is The Granddaddy Of Them All

Tensions flared between the parties involved after the New York Times published an article.

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Who owns the rights to the Rose Bowl and Rose Bowl Game? The Pasadena Tournament of Roses Association claims that it is the rightful owner of the marks and has sued the City of Pasadena for trademark infringement, unfair competition, and breach of contract.

The complaint, filed in the U.S. District Court for the Central District of California on February 4, touches upon both whether the City of Pasadena has created confusion in the marketplace about whether it owns any rights in the Rose Bowl and Rose Bowl Game trademarks as well as whether the Pasadena Tournament of Roses Association needs the City of Pasadena’s consent under a contract to host the famous college football Rose Bowl Game outside of Pasadena, California, if a force majeure event, such as the coronavirus pandemic, occurs. In fact, this year’s Rose Bowl did take place away from Pasadena and was instead hosted in Arlington, Texas.

The Pasadena Tournament of Roses Association owns a federal registration to the Rose Bowl Game trademark and has possessed the registration since 1975. It has also owned registrations for Rose Bowl in connection with clothing, jewelry, playing cards, and balloons for many years. However, the City of Pasadena has owned the trademark registration for the Rose Bowl word mark in connection with promoting sports competitions since 2000.

The Pasadena Tournament of Roses Association takes the position that the City of Pasadena’s registration for Rose Bowl should not play a role in the litigation, referencing the aforementioned contract between the parties where the City of Pasadena allegedly acknowledged the Pasadena Tournament of Roses Association’s ownership of that mark and agreed not to use that mark in connection with advertising or promoting the Rose Bowl Game. The contract was not attached to the complaint, but the Pasadena Tournament of Roses Association did include pertinent parts of the agreement, such as:

The Association agrees that it shall cause the Game to be played on
Game Day at the Rose Bowl Stadium during each Tournament Year,
except in the event of Force Majeure which prevents the Game from
being played at the Rose Bowl Stadium on Game Day despite the use by the Association and the City of their commercially reasonable efforts to remedy such event of Force Majeure; provided, however, if the parties are unable to remedy such event of Force Majeure and the Association elects to cause the Game to be played on a day other than Game Day, then the Association shall cause the Game to be played at the Rose Bowl Stadium on such alternative date; provided, that the Rose Bowl Stadium is in a condition that would permit the Game to be played on such alternate date.

The complaint also states that a trademark agreement between the parties says that the City of Pasadena would not “register the trademark ROSE BOWL, the ROSE LOGO, ROSE BOWL DESIGN […] or other trademarks containing the words ‘Rose Bowl’ […] for the events of the Association.” A separate consent agreement allegedly states that the City of Pasadena agreed “not to use any mark containing the words ROSE BOWL on or in connection with the Association’s Goods and Services.”

Tensions flared between the parties after the New York Times published an article, on January 1, that stated, “the Rose Bowl Game, a jewel so treasured it has been trademarked, has been hijacked, usurped and taken away with the type of roguish disregard for tradition that might otherwise be witnessed in Pasadena only when a protected flax-leaved paperbark tree is chopped down.”

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Victor Gordo, the newly elected mayor of the City of Pasadena, added, “the football game belongs to the City of Pasadena and the people of Pasadena.” The Pasadena Tournament of Roses Association disagrees and further claims that its contract with the City of Pasadena has been breached based on the City of Pasadena using the Rose Bowl trademark to advertise and promote the Rose Bowl Game.

Tensions between the parties were enhanced when the City of Pasadena sent a letter to the Pasadena Tournament of Roses Association with the stated position that consent from the City of Pasadena was required in order to host the Rose Bowl Game away from the Rose Bowl Stadium. The Pasadena Tournament of Roses Association says that nothing could be further from the truth, particularly in a force majeure situation, which is currently the situation presented by COVID-19. It will now proceed to litigation with the intent of having a court make a declaration in agreement with its stated position.

Darren Heitner is the founder of Heitner Legal. He is the author of How to Play the Game: What Every Sports Attorney Needs to Know, published by the American Bar Association, and is an adjunct professor at the University of Florida Levin College of Law. You can reach him by email at [email protected] and follow him on Twitter at @DarrenHeitner.

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