The United States Patent and Trademark Office (USPTO) recently rejected Major League Baseball’s application to register the words “PLAY BALL” as a federal trademark for apparel.

This simple phrase has served as the universal catalyst for American baseball for over a century. It is shouted by umpires to signal the official start of a game, echoed by fans in crowded stadiums and uttered by children on neighborhood sandlots. It is an intrinsic part of the cultural lexicon, even being adopted recently by the corporate world to mean “cooperate” or “get moving.”

The phrase is so closely tied to America’s national pastime that Major League Baseball (MLB) recently sought to expand its branding to include a line of clothing under the name of PLAY BALL, a fact which was disclosed in its recent USPTO application to register this mark. The USPTO’s denial of this trademark application marks a significant, if symbolic, defeat for the league’s aggressive brand-protection strategy, drawing a clear line between proprietary corporate assets and the shared public domain.

Is PLAY BALL really a trademark?

The MLB began its pursuit of trademark registration of the phrase “PLAY BALL” in 2022 with its submission of a trademark application to the USPTO. While aggressive, this approach makes sense from a commercial standpoint, as exclusivity of this purported mark would allow MLB to monopolize a lucrative merchandise market while shutting down unauthorized third-party vendors who attempt to call their brand PLAY BALL.

With no USPTO registration of the PLAY BALL mark forthcoming, MLB now simply owns the mark as a common law trademark.

Can common phrases be registered as trademarks?

USPTO rejected the application on the grounds that “Play ball” is a commonplace term, message or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.” According to Trademark Examiner, the phrase conveys an everyday sentiment rather than identifying a specific commercial source of clothing sold by the league.

For a mark to qualify for federal trademark registration, consumers must look at the word, phrase or design and immediately associate it with one specific company or “source,” in USPTO parlance. It is the Examiner’s firm position that when consumers see “PLAY BALL,” they do not inherently think of MLB corporate headquarters; they think of the general sport of baseball itself. The Examiner specifically compared the proposed PLAY BALL mark to attempting to register the common phrase “Drive safely” as a mark, which Volvo tried to do back in the late 1990’s with no success.

The Dispute: Is MLB’s PLAY BALL mark a registerable trademark for use with clothing?

The fundamental rule of federally registerable trademarks is that they must protect consumers from confusion and prevent unfair competition. That is the crux of the requirement that the mark must identify a single source of goods or services. In this case, the Examiner has held – twice – that MLB’s proposed PLAY BALL mark does not meet these requirements with respect to its trademark application for use of the mark with clothing and apparel.

Had MLB succeeded, the ruling could have had a chilling effect on independent content creators, local youth leagues and casual apparel designers who use the phrase without any intention of mimicking official MLB merchandise. By keeping the phrase “Play Ball” in the public domain for uses with clothing items, the USPTO ensured that the phrase remains free for everyone to use in the marketplace.

MLB’s USPTO Trademark Registration for a Separate PLAY BALL Mark

The MLB still has its PLAY BALL PARK mark registration that it can fall back on for use with a variety of sports-related services, including the provision of sports facilities and the hosting of tournaments and games, as well as its line of video and arcade games. It also retains common law rights to the PLAY BALL-branded youth baseball initiative that it launched in 2015, which is MLB’s grassroots program that is designed to encourage participation in baseball and softball among children and teenagers.

What’s Next for the PLAY BALL mark?

Following the Examiner’s final decision, MLB now has a three-month deadline to seek reconsideration by the Examiner or to file an appeal of the decision with the USPTO’s Trademark Trial and Appeal Board. However, the chances of success with this appeal are likely to be low, given that the Examiner twice ruled against the league, with the final Office Action landing at a whopping 91 pages. It is unclear whether MLB wants to risk wasting both the time and the money to attempt to overturn the Examiner’s decision on its trademark application for the PLAY BALL mark.

For now, it appears that the common phrase “Play Ball” can continue to be used on clothing items in the proverbial public square, and any disputes that arise will be treated as disputes between common law trademarks owners.

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.