If you live outside of the Northeast or Mid-Atlantic regions, you may not have noticed Sunday's sudden 180-degree turn back to cloudy skies, threats of downpours and overnight frost warnings. Today is actually looking much better, but Sunday night I went to sleep under a frost warning and yesterday I broke out the heavy coat. Though the weather may be disappointing, it is also a sure sign that a certain event is right around the corner. Or should I say, a certain event is just around four turns to the left. Kentucky Derby® week has arrived!
I typically spend the week leading up to the Derby down in Kentucky, and every year I spend it in a jacket and under an umbrella. It has not exactly been the fashion show some may imagine. But if there is anyone comfortable in a pair of muck boots; it is me. So let the annual panic and analysis of weather and track conditions begin. Interestingly, for those familiar with the horses and the track records of each, a muddy track can be very advantageous when picking the winner.
But for most people, winners are picked on horse names alone. Surely you remember when Jessica Simpson® predicted the victory of Smarty Jones, based solely on his name. Along with the fashion, mint juleps and age-old traditions, the unique names of the horses are one of the most entertaining parts of the race. The horse names are often funny and often times seem to make no sense. However, the process of naming a thoroughbred is far from nonsensical.
To become eligible for the Kentucky Derby, a horse must meet several requirements. The most important is that the horse must be a registered thoroughbred by The Jockey Club®. In order to be eligible for registration, among several other requirements, genetic typing, parentage qualification and calculation of gestation period of the horse must be proven. When the owner of a newly born thoroughbred submits the foal for registration, they must submit name selections in order of preference.
The registration of a name through The Jockey Club is actually quite similar to the registration of a name through the U.S. Patent and Trademark Office. Like with trademark registries, the proper grants and recordation of thoroughbred names are vitally important to maintaining the integrity of the breed. A unique and protected name is also very important for the rare event that the horse becomes a Triple Crown® contender.
Just as a trademark application must show that the applied-for name or logo is unique and not likely to be confused with a similar product, a thoroughbred’s name must be unique enough to claim and protect. What’s in a name? Would a Secretariat by any other name run as sweet? The Jockey Club does a great job of answering that question. And what is in a name are a lot of rules of what cannot be in a name:
1. Names with more than 18 letters (including characters and spaces);
2. Names consisting of only initials;
3. Names that end in a horse related term, such as “filly”, “stallion” or “stud”;
4. Names consisting entirely of numbers;
5. Names that end in a numerical designation, like “2nd”;
6. Names of living persons, unless submitted with written permission;
7. Names of deceased people, unless approved upon a satisfactory written explanation;
8. Names of racetracks or graded stakes races;
9. Names of commercial, artistic or creative significance;
10. Names with suggestive, vulgar or obscene meaning; names in poor taste; names that may be offensive to ethnic, religious or political groups;
11. Names appearing to harass, humiliate or disparage an individual, group of individuals or entities;
12. Names that are currently active in racing or breeding;
13. Names of any horses that have won a grade one stakes race within the past 25 years;
14. Names that have been granted as permanent names to other horses;
15. Names similar to permanent names;
16. Names already recorded in The American Stud Book by the same sire or dam;
17. Names within the first five generations of the pedigree
The Jockey Club, The American Stud Book Principal Rules and Requirements, § V Rules for Registering, Genetic Typing and Parentage Verification, 6 – Naming, http://www.registry.jockeyclub.com/registry.cfm?Page=tjcRuleBook#six (last visited Apr. 30, 2019).
In addition to all of all of these rules, The Jockey Club reserves the right of approval on all name requests. While most of the above rules are very clear, there are a few that are quite reminiscent of the subjective rules of trademark. What is considered similar? What could cause a likelihood of confusion? With questions like this, it is clear that there is room for argument, interpretation and subjective viewpoints. Like registering a trademark, naming a thoroughbred is most definitely an art and not a science.
While The Jockey Club does a great job of protecting the integrity and originality of thoroughbred names, there are still several layers of protection that may be desired. For the great majority of horses, the trademarking of their names is completely unnecessary, and more importantly, not legally attainable. One of the first and foremost pieces of evidence that must be proven during the prosecution of a trademark is that the mark is being used in the stream of commerce, or that there is a bona fide intent to use the mark in commerce. If a horse owner is not actually using the horse to sell a product or service, there isn't an argument for trademark registration.
I have not yet owned a horse that gave me any reason to register a trademark. However, by big red horse, Clifford, had personality and good looks for days. My parents could have marketed children’s books and posters named, “Clifford the Big Red Horse.” This of course, would have surely presented an interesting likelihood of confusion argument. I know every single person who just read that had one picture come to mind. The image of a giant red dog, a yellow dog house, and probably even the recognizable text font of the name, “Clifford.”
Though my dad may argue that Clifford caused his wallet to enter the stream of commerce, Clifford’s name never did. But for Omaha Beach, War of Will and eighteen others, the need for trademark registration could be found just around the fourth turn to the left. A Kentucky Derby victory immortalizes a horse and opens up the possibility of a Triple Crown title. Once the blanket of more than 400 red roses is placed on the back of a thoroughbred, that horse’s life is forever changed. Also changed are the lives of the owners, who will now be presented with valuable merchandising, book and movie opportunities.
This is the point where a good trademark attorney must consider all of the likely international classes in which a horse’s name should be protected by trademark. Some of the most likely categories for a Derby winner are in entertainment services, photographs, paintings, posters, calendars, books, figurines, attire and horse breeding services.
Though there are clear reasons for registering a trademark for a Derby winner, there are also reasons to obtain trademarks for other horses. Most horses reach fame due to success in thoroughbred racing. However, many horses have reached fame, though more modestly, in the equestrian sports of standardbred racing, dressage, jumping, and reining. Owners of horses who sell merchandise showcasing the horse’s name or who advertise for breeding services may also consider the extra protection a trademark can provide.
So as you consider your top picks for Saturday, maybe its most fun to choose your horse “Smarty Jones” style. Which name would you most like to see immortalized as a statue, gilded on the movie screen and printed on your Koozie®?
And now that we know the rules of naming a thoroughbred, we can all imagine the 20 thoroughbreds swinging their heads along to this week’s hit song lyrics, “I’m the only one of me . . . you’re the only one of you.” – Taylor Swift®
Disclaimer: This blog/website is intended to be published for educational and entertainment purposes and to give readers a general idea of the law of trademark. This blog/website is not intended to give any specific legal advice or to target a specific person. Readership of this blog cannot create an attorney-client relationship between you and the publisher. This blog should never be used to substitute the seeking out of personal, legal advice. The discussion of an existing or potential trademark shall not be taken as an endorsement by creative law studio, nor shall the same be taken as an endorsement of creative law studio. The discussion of specific trademarks does not mean that creative law studio is a record attorney for such trademarks.