Naismith Memorial Basketball Hall of Fame, Inc. v. Naismith’s Pub & Pretzel, Inc. (19-cv-30039).

James Naismith created the game of basketball in Springfield, Massachusetts in 1891. Beginning at least as early as 1959, the Hall of Fame began operating a basketball hall of fame in the same town, named for James Naismith. The Hall owns a number of trademark registrations involving the name Naismith, including NAISMITH MEMORIAL BASKETBALL HALL OF FAME, NAISMITH BASKETBALL HALL OF FAME, NAISMITH COACHES CIRCLE, NAISMITH ORANCE, and several logo marks that incorporate “Naismith” in the logo. The Hall accuses Naismith’s Pub & Pretzel of deceit as to affiliation, false designation of origin, sponsorship or approval, dilution, and unfair competition, under both the Lanham Act and Massachusetts common law, asserting that the name of the restaurant, located a mere 1.3 miles from the Hall of Fame, was intended to trade off the good will of the Hall. The Hall notes that the restaurant is decorated with basketball memorabilia, including a number of images of James Naismith. The Hall’s claims all rely on “Naismith” being the dominant part of both its registered marks and Defendant’s name. Notably, the Hall does not indicate any direct connection with Naismith or his family. Also noteworthy, the first of the registrations was initially refused over a prior registration to “Naismith Awards,” with the examining attorney noting that the dominant part of each was “Naismith.” The Hall overcame the rejection through a consent agreement in which each asserted that there was no confusion between the two. While that might seem inconsistent with the current lawsuit, the “Naismith Awards” took place in Atlanta, not Springfield, and had coexisted at the time for nearly twenty years with no confusion noted.

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