With the introduction of retro Hartford Whalers jerseys to the market, questions concerning the rights to the mark “Hartford Whalers” abound.
The prevailing thought appears to be that the City of Hartford or State of Connecticut owned the trademark rights to “Hartford Whalers” but let the registration expire this summer. There is confusion over whether the rights are now owned by the NHL or the former owner of the Whalers and current owner of the Carolina Hurricanes, Peter Karmanos. In the absence of any concrete information as the ownership of the Whalers trademark rights, allow me to speculate:
First, there are at least two sets of rights. The City of Hartford likely has the exclusive right to use the name “Hartford Whalers” in connection with a NHL team. This right is likely the product of a contractual agreement between the NHL and the City entered into when the Whale moved to Carolina. These rights have nothing to do with a trademark. Rather, these rights prevent the NHL from using the Whalers nickname in connection with another franchise. A similar example might be the Cleveland Browns franchise, which moved to Baltimore in 1996 but left behind the team name, history and records to the City of Cleveland. I don’t believe that any such agreement would include exclusive rights to license Hartford Whalers merchandise. Those rights likely belong to the NHL.
Second, we have the trademark rights. Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks can be renewed forever as long as they are being used in commerce. As I wrote yesterday, the last activity in connection with the mark “Hartford Whalers” was a cancelled application back in 2001. Thus, according to the US Patent & Trademark Office, the mark had not been registered in some time.
The fact that the mark was not registered does not necessarily mean that no one owns a right to the Hartford Whalers mark. The NHL, or other entities, may own common law rights, arising from the use of the mark. Federal registration is not a prerequisite to establishing rights in a trade mark.
The answer to who owns the rights to market the Hartford Whalers name is not entirely clear. What is clear to me, is that there is significant interest in this issue and in the Whalers.
This entry is cross-posted on Connecticut Sports Law. To read more on the Hartford Whalers, click here.
-Dan Fitzgerald
