Trademark Issues for 'Have A Ball'

Part One: Trademark Protection for 'Have A Ball'

You are an attorney practicing law in Chicago, Illinois. One day a new client, May, walks into your office. May is the owner of a small business called “Have A Ball”1, which provides party planning and services for clients in the northern Chicago suburbs. May has run the business out of her home in Highland Park, Illinois since 2007, and over time the business has grown and become very successful. 2

While Have A Ball provides planning and organization for all kinds of parties, May and her two employees specialize in parties for children and teens, with attendance ranging from 15 to 400 guests. Have a Ball parties are advertised in both print ads and on May’s website (www.haveaball.com) as being engaging, creative, and entertaining.

As a part of her services, May, on behalf of her client, hires DJs or bands, caterers, serving and cleaning staff, and arranges for rentals of dishes, table linens and other party necessities. Part of the Have a Ball “package” includes party favors for the guests to take home with them. These gifts range from custom t-shirts to stuffed animals, and are often presented to guests in clever, customized packaging. May calls these packages “Ball Bags” though this terminology never appears in her marketing materials or invoices. (The item on her invoices reads “party favors”).

May wishes to expand her business in a couple of different ways:

1. Franchise the business and it’s packaging. This desire to franchise coincides with May’s move to Nashville, Tennessee. She wishes to re-establish her business in Nashville, while franchising the successful business to one of her current employees, Emily, in Illinois. May intends to license the brand “Have A Ball” to Emily for use in connection with her party planning business as part of the franchise agreement. She would like there to be one initial payment for Emily to take over her Illinois business and then after the first twelve months of the agreement for Emily to pay May a percentage of the profits earned by theIllinois

Ball is a common English word for:

1. a round or roundish body or mass: such as a spherical or ovoid body used in a game or sportor
2. A formal social gathering fordancing

Have A Ball is an actual business only in your professor’s imagination. While there are real businesses similar to Have A Ball, all aspects of business, including its website, are a fabrication for purposes of this exam. Any resemblance to any actual company, either in or outside of the state of Illinois is purely coincidental business. While Emily has worked for May for three years, Emily has never previously owned a business or a franchise.

2. Expand to an internet-based business. May would like to begin to sell “A Ball in A Box” party packages through her website. She envisions selling an individualized party plan based on on-line communications with the client complete with Ball Bags for each party, all packaged in a spheroid package. She would also sell just the Ball Bags separately through herwebsite.

May has no existing federal or state trademark registrations. She asks you to advise her as to what she needs to do to protect and grow her brand. (Address any trademark issues that arise. Please do not detail business solutions that do not pertain to trademark law unless absolutely necessary to clarify your answer.)

Regardless of your answer in Part One, May asks you to explore registering her mark “Have A Ball” with the U.S. Patent and Trademark Office. You do a preliminary search and find, among others, the following registrations3:

1. “BALL” for glass home canning jars first used in 1894 and first registered in 1926, owned by the Ball

2. The design mark below for metal closures for home canning jars. First used and first registered in 1960, owned by the BallCorporation

3. “BALL STATE” for educational services, namely providing college and graduate level instruction and programs in art, athletics, drama and music; and entertainment services, namely providing and conducting art, athletic, dramatic and musical events”. First used in 1929. First registered in 1990. Owned by Ball State University of Muncie,

4. “BALLS” for organizing and conducting educational and entertainment exhibitions in the nature of conventions in the field of rocketry. First used in 1991. First registered in 2011. Owned by Tripoli Rocketry Association, Inc. of Highlands Ranch,
   
   
5. “HAVE A BALL” for dough-enrobed foods consisting of a dough-based wrapper with filling and restaurant services First Use 2009, registered 2012. Owned by Pace's Pizza Balls,
   
   
6. “FUN BALL” for perforated plastic baseballs and softballs. First use 1963. First registered 1986. Owned by Kusan, Inc. of Brentwood,

What issues do you think may arise from an application for registration with the U.S. Trademark Office. How will the trademark examiner rule? Why?

Regardless of any of your previous answers, assume that the registration for “Have A Ball” issues. One night while browsing the web, May finds the following websites:

1. A review in the local newspaper of May’s business that uses May’s mark. (The review appears in both the print and online versions of the)

2. A pornographic web page athavemyball.com

3. A website containing a forum where people complain about May’s parties atnothavingaball.comand

4. An application for registration with the USPTO for “Have a F*@kingBall”.

What trademark issues arise from each of these? How do you advise May to proceed and how do you think these matters will turn out?