2012 World Series ‘Welcome to the D' Not Trademark Use

Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...

By Anandashankar Mazumdar

Dec. 8 — The Detroit visitors bureau's display of “Welcome to the D” signs during the 2012 World Series did not infringe a Detroit-area musician's trademark rights, a district court ruled Dec. 7.

Ruling that the bureau did not use the phrase in commerce as a trademark, the U.S. District Court for the Eastern District of Michigan dismissed the claims of musician Mark Kassa.

Musician Hosts Video Series, Online Apparel Store

Kassa of West Bloomfield, Mich., is a singer and guitarist with a local music group called Slight Return. He hosts a YouTube video series called “Welcome to the D” and operates an online retail outlet called Welcome to the D that sells T-shirts with legends and logos incorporating terms such as “D,” “The D,” “Detroit,” “Welcome to the D” and “Slight Return.”

Kassa has obtained U.S. trademark registrations for “Welcome to the D” related to apparel, live musical performances and an episodic variety show. He also holds registrations for “The D.”

In 2012, the Detroit Tigers and San Francisco Giants made it to Major League Baseball's World Series and, for games hosted in Detroit, the Detroit Metro Convention and Visitors Bureau posted signs and banners using the phrase “Welcome to the D.”

Three years later, when Detroit was the venue for the USA Volleyball Open National Championships, the bureau again put up “Welcome to the D” signs and banners.

In September 2015, Kassa sued the visitors bureau, alleging trademark infringement under the Lanham Trademark Act of 1946, 15 U.S.C. §1114, trademark dilution and false designation of origin under 15 U.S.C. §1125, and trademark infringement and unfair competition under Michigan state common law.

The bureau moved for dismissal under Fed. R. Civ. P. 12(b)(6) for failure to state a claim for which the law offers relief.

No Use in Commerce Found 

The court granted the motion to dismiss after finding that the visitors bureau's use of the phrase was not a trademark use in commerce to identify the origin of goods or services but, rather, in its literal meaning.

“When the language on the banners and signs is considered in its entirety, it becomes clear that Defendants used ‘Welcome to the D' as a greeting to those arriving in the City of Detroit, not as a source identifier,” the court said.

The court noted that other phrases also appeared on the banner, and that the visitors bureau logo and the Detroit Sports Commission's logo were included at the bottom as the messages' sources.

“That the banners and signs identified others as the sources of the messages and as the sponsors of the events underscores that the banners did not use ‘Welcome to the D' as a source identifier,” the court said.

The banners made no plausible suggestion that Kassa was sponsoring the World Series or the volleyball championship, the court said.

Furthermore, the court found that the use of the phase constituted fair use because, under the first fair use factor, the visitors bureau was using the phrase “in its primary or descriptive sense.”

The court thus dismissed all of Kassa's claims.

The court's ruling was issued by Judge Matthew F. Leitman.

Kassa was represented by Yaldo Law PLLC, Birmingham, Mich. The visitors bureau was represented by Barris, Sott, Denn & Driker PLLC, Detroit.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Mike Wilczek in Washington at mwilczek@bna.com

Text is available at: http://src.bna.com/brD.