Seattle Metropolitans Hockey LLC has filed suit against Seattle Hockey Partners LLC alleging causes of action related to trademark infringement involving the Seattle Metropolitans “S” logo, shown above.
As the complaint explains,
Seattle Metropolitans was formed in 2021 to continue and expand the life-long passion of its founder and sole member Paul Kim. Paul grew up in Seoul, South Korea. He had asthma, and his mother wanted him to find something to play away from dirt and pollen, and his cousin played hockey. When he saw his first game, he fell in love. He played hockey in Seoul from ages 8 to 10, then the family moved to the Seattle area, where he continued to play, eventually with the Sno-King Amateur Hockey Association and at Western Washington University. While he was trying to learn English, his teacher gave him a book about Seattle hockey history, where he learned how Seattle Metropolitans of the Pacific Coast Hockey Association won the Stanley Cup in 1917 when it defeated the Montreal Canadians of the National Hockey Association 3-1 in a best-of-five series in Seattle to become the first American team to win the Cup.
Kim said he realized the 100th anniversary of the founding of Metropolitans was coming up in 2015 and nothing had been arranged for the commemoration. In 2014, he acquired trademark rights to the distinctive “S” logo, the SEATTLE METROPOLITANS trademark, and green, red, and white colors and horizontal patterns, then set out to revive the memory of the team.
He registered the marks in several classes, including apparel and museum services.
By 2017, Kim was selling “S” logo and word mark hats, T-shirts, jerseys, and hockey paraphernalia online and through sporting goods stores and other retailers.
Seattle Metropolitans also organized hockey games while promoting its “S” logo and brand.
In early 2018, news began to spread of the proposed return of the National Hockey League (NHL) to Seattle. Defendant’s CEO met with Kim and wore a Seattle Metropolitan’s branded jersey for a photo opportunity.
In December 2018, the NHL Board of Governors voted to approve Seattle’s expansion team, which became known as the Seattle Kraken and started playing in the 2021-2022 season.
In 2020, defendant requested rights to use Seattle Metropolitans colors in a promotional video, and Kim agreed. NHL Seattle Executive Vice President-General Counsel contacted Kim about a “formal arrangement for [Defendant’s] team to use Seattle Metropolitans trademarks.”
However, Kim said he was shocked that defendants offered only a single NHL season ticket in exchange for the jersey rights. Defendants later increased their offer to 5% of net sales (compared to typical royalty rates of 12-15% of gross sales).
In 2021, defendant used the “S” logo, the SEATTLE METROPOLITANS word mark, and the same distinctive red color in a banner at Climate Pledge Arena (where the Kraken play) commemorating the 1917 Stanley Cup Championship.
In 2023, defendant offered to “purchas[e] and thus extinguish” all rights in Seattle Metropolitans’ trademarks, but negotiations soon broke down.
In November 2023, according to the complaint,
Defendant unveiled its Winter Classic jerseys and related merchandise, which incorporates the virtually identical “S,” red color, white border and white block letter design of the federally registered and famous Seattle Metropolitans “S” logo…
Also according to the complaint,
Defendant’s actions were calculated and willfully intended to create a false association between Defendant and Seattle Metropolitans, not only its famous brand as seen on all types of apparel and hockey paraphernalia, but also related to organizing, arranging and conducting ice hockey games and other hockey-related services. Indeed, Defendant’s agents have admitted spending months striving to create an association with Seattle Metropolitans. Matty Merrill, Adidas designer commissioned by Defendant to produce the infringing Winter Classic design, admitted the lengths went to in copying Seattle Metropolitans because “[t]he Kraken obviously want to be associated with the Metropolitans.”
The Seattle Kraken previously settled a trademark dispute involving Kraken Rum, which then became an official sponsor of the team.
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