The NFL’s Kansas City Chiefs are widely known for their Super Bowl wins and their “dynasty” that is underpinned by quarterback Patrick Mahomes and tight end Travis Kelce. While the duo routinely connect on the field, they are also famous friends off the field. Recently, they opened a steakhouse together, with reported hopes of opening more in the future. With such business ambitions in mind, one would expect them to pick a creative restaurant and brand name for such a venture.
What’s In A Name?
The duo selected a moniker that is close to both of their hearts: A combination of both of their on-the-field numbers, specifically, 15 for Mahomes and 87 for Kelce. Thus, they arrived at the name of “1587 PRIME” for their brand. One of the trademarks that they chose to register with the United States Patent and Trademark Office (USPTO) is this design mark:
From USPTO TSDR Records for Trademark Registration No. 8,138,965
Their business also holds Registration No. 8,161,930 for the word mark of 1587 PRIME for “Restaurant and bar services.”
Who Got Upset About the Name?
Unfortunately, a small shoe company calling itself 1587 Sneakers has taken issue with Kelce and Mahomes’ business name. Instead of opposing the trademark applications at the USPTO, though, this plaintiff has filed a federal lawsuit against Mahomes & Kelce’s 1587 Prime Holdings, LLC, in the Southern District of New York.
In trademark applications submitted to the USPTO over 2 years after the 1587 PRIME applications, the New York-based 1587 Sneakers states that it has been using the mark of 1587 to sell its merchandise since April 2023. This date could be noteworthy, as Mahomes and Kelce’s company filed its original trademark applications for the 1587 PRIME marks for its restaurants in August 2023 as 1(b) or “intent-to-use” applications.
Why Not Just Oppose the Trademark Applications?
Trademark Opposition actions before the USPTO must be brought while a trademark application is pending. These actions are heard by the USPTO’s Trademark Trail and Appeals Board, or “TTAB”.
It is noteworthy that the TTAB’s hands are tied in that they cannot issue injunctions to stop a party from using a mark and the TTAB cannot award monetary damages to a party who claims to be injured by another party’s use of its trademark. The TTAB only decides the rights of each party to register a trademark in Opposition proceedings.
1587 Sneakers’ filing of this lawsuit in federal district court enables them to seek both injunctive relief and monetary damages from Mahomes and Kelce’s company. The federal court also allows for broader discovery procedures during a lawsuit.
The federal lawsuit can also have the preclusive effect of binding the TTAB’s decisions in any future disputes brought before TTAB regarding the 1587 trademarks. A favorable decision at the TTAB by one party does not similarly bind a federal court to follow the TTAB’s ruling.
There is one final, more nuanced reason that the sneaker company likely did not oppose the trademark applications before Mahomes and Kelce’s 1587 PRIME marks registered: They almost certainly would have lost the Opposition action before the TTAB. The 1587 Sneakers brand does not sell food or provide any type of bar or restaurant services under its 1587 mark (yet). Therefore, they did not have a legal leg to stand on to oppose the 1587 PRIME trademark applications, as these applications were both for “restaurant and bar services” only.
What Happens Next?
1587 Sneakers originally sought an emergency injunction to stop 1587 PRIME from using the “1587” name. The judge in the matter recently declined to issue this injunction, meaning that both parties are still lawfully using the “1587” name for their brands and the case is now proceeding in the Southern District of New York.
We will keep you posted on new developments here and on LinkedIn. Stay tuned!
Sand, Sebolt & Wernow is an intellectual property law firm that specializes in patents, trademarks, copyrights, IP litigation, foreign filings and trade secrets. We understand that successful companies are built on innovative ideas, products and brands. Our IP attorneys will make sure your intellectual property is protected in today’s competitive business environment. Contact us today.