ESPN and Deadspin Set for Showdown over Grantland Trademark

Last Friday, ESPN gave bloggers everywhere something to write about when it abruptly jettisoned arguably its best known personality, Bill Simmons. Deadspin – a direct competitor with ESPN’s online properties – has spilled a Simmonsesque amount of ink since the news broke, publishing no less than 10 posts related to the subject. The majority of the posts are not so kind to Simmons.

(Editor’s Note: I am a huge fan of Simmons, Grantland, and Deadspin)

One of the posts asks, “So, Who Should Run Grantland Now?” The post seems to assume that the name “Grantland” belongs to ESPN and not Deadspin. Most people familiar with Grantland would also assume that the the name belongs to ESPN.

To steal from a Simmons-related property: What if I told you that ESPN was not the first party to seek trademark protection for the name “Grantland.” What if I told you that Deadspin was the first party to seek trademark protection for “Grantland.”

Businesses everywhere can learn important lessons about the need to protect their trademarks based on the tale we are about to tell.

On March 26, 2015, Thomas Craggs filed an application for the mark “Grantland.” Craggs, better known as Tommy Craggs, is the Executive Editor for Gawker Media.

Gawker Media is Deadspin’s parent company. As we have written before, Gawker routinely seeks to protect its blogs with federally registered trademarks. Something ESPN should be more cognizant of doing in the future.

At some point, it appears Gawker/Deadspin realized that ESPN had not sought federal trademark protection for “Grantland.” As a competitor, it is likely Gawker/Deadspin recognized that they could create blog material and cause some headaches at ESPN by filing for the mark “Grantland” first.

Gawker/Deadspin seemed to hope their efforts to troll ESPN would fly under the radar. Indeed, after Eriq Gardner, a Senior Editor for The Hollywood Reporter, pointed out what Gawker/Deadspin were up to, Tom Ley of Deadspin responded with the amount of grace you might expect.

In any event, ESPN was already onto Gawker/Deadspin’s game. On April 14, 2015, ESPN called BS (Report) on Craggs’s application and filed its own application for the trademark GRANTLAND.

So, Who Owns the Trademark to Grantland?

You may be thinking Tommy Craggs (Gawker/Deadspin) because he filed for the trademark before ESPN. But that is not necessarily the case. In the United States, trademark rights are not awarded to the first party to FILE for a trademark. Typically, trademark rights belong to the first party to USE a trademark.

Craggs’s application claims that he first used the mark on March 20, 2015 here (PS – I have a sneaking suspicion that this link will not be live too long).

ESPN’s application claims a first use date of June 8, 2011.

As a result, ESPN is likely to be granted the federal trademark rights to GRANTLAND.

While ESPN may ultimately succeed in obtaining a federal registration, it will be much more difficult than it would have been if ESPN filed its application before allowing its competitor to file a competing application for the trademark. It is unclear whether Gawker/Deadspin ever expected to succeed in obtaining trademark protection for “Grantland.” I doubt it. Their ultimate goal was probably to cause a stir and make ESPN’s road to trademark protection more difficult. Mission accomplished.

Businesses of all sorts can learn from the pending Grantland trademark situation. ALWAYS seek federal trademark protection for your trademarks as early as possible not just for all of the benefits of trademark protection, but also to prevent competitors from trying to register your mark and make your path to protection more difficult. If you don’t, you may end up like ESPN here – with a headache and a heap of legal fees on your hands.

Be sure to check back here for updates as this story continues to unfold.