Swing and a miss for torpedo bat trademark application?

Intellectual Property /
John Simpson
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By Tony Poland, LegalMatters Staff • Torpedo bats are a hit in the baseball world, but attempts to register the name as a trademark are likely to strike out, says Toronto intellectual property lawyer John Simpson.

The New York Yankees opened the Major League Baseball season on a torrid home run pace using the bats, sparking “torpedo” mania. But Simpson, principal of IP boutique Shift Law Professional Corporation, says he is doubtful a pair of efforts to register “torpedo” for bats will find success.

“The term ‘torpedo bat’ has become popular almost overnight,” he explains. “Whenever a word or a phrase creates a buzz, enterprising but misguided businesses often try to register the term for the obvious financial possibilities. But the very popularity that makes them want to register it is what disqualifies it from trademark protection since it is not going to identify any one trade source.

‘Goes right to the core of IP law’

“It goes right to the core principle of intellectual property law, which is that a trademark, to be a trademark, can only identify one trade source and the licensees it controls,” Simpson tells LegalMattersCanada.ca. “For all intents and purposes, any attempt to register torpedo bats as a trademark is a swing and a miss.”

The Yankees made headlines after setting a three-game record for home runs, hitting 15 to start the Major League Baseball season, with nine coming off the barrel of a torpedo bat.

The hype soon followed. It was reported that two bat companies – Marruci and Victus – posted record sales after releasing a version of the bat to the public.

The bat, which essentially sees the thickest part moving slightly to the middle, giving it a pin-like shape, has also aroused the curiosity of major league players.

Players curious about the bats

“We have about 55 per cent of major league players using our bats right now. And I would say about half of them have called in the past week asking for a torpedo model of their bat,” Marruci CEO Kurt Ainsworth told Fox Business. “So I think you’re going to see us going from about eight per cent to 10 per cent torpedoes, then potentially 50 per cent of our players using torpedoes.”

The technology is not new. In fact, New York Mets shortstop Francisco Lindor used a torpedo bat last year. But the Yankees’ opening sweep of the Milwaukee Brewers has created quite a stir.

“Now that you see the Yankees had that success, whether it’s a placebo effect or not, or now you’re looking at the data saying, ‘Whoa, my sweet spot’s getting bigger. My hitting area is getting bigger, maybe I’ll try that,'” Ainsworth told Fox.

Simpson says in a sport rooted in tradition where the shape of bats doesn’t seem to change, the recent hype generated by torpedo bats is no surprise. Neither is the attempt by two companies to cash in on the craze.

‘This type of thing comes up often’

“This type of thing comes up often when new phrases or new terms, such as torpedo bat go viral,” he says. “Individuals and businesses seek to register a popular term, but because it is popular, you can’t get exclusive rights.”

“In Canada, getting exclusive rights to use the word torpedo for a baseball bat would be problematic if it is clearly descriptive of a feature of that bat,” he says, “You also have to consider if it is really shaped like a torpedo. If you market a bat as a torpedo and it is not torpedo-shaped, then that’s going to be misdescriptive of the term. Either way, it definitely makes it a challenge to get a registration for it.”

However, despite the unlikelihood of success, some people will still try, Simpson says.

Companies will roll the dice

“They will roll the dice and see if they can get a registration,” he says. “By saying they have applied for a registration, they may be able to leverage that to their advantage.”

Simpson explains that someone with a trademark application may be able to use it to threaten others selling a similar product.

“Some of the people who are targeted might think, ‘I can’t afford to defend a lawsuit even if I know I am right, so I should offer to settle,’” he says.

Although the applicants face an uphill battle, it doesn’t necessarily mean they will be rejected, says Simpson.

Success is not impossible

“You might be able to slip something through the trademarks office,” he says. “An examiner might not have a clear understanding of the issue, or their research may not reveal a problem.

“The trademarks office is made up of examiners who we task with the job of making sure that something is registrable, but things that shouldn’t get through have been known to end up getting through.”

However, even if they are successful, Simpson says he doubts the trademark “is going to be ultimately enforceable in a court.”

“To use a basketball term, this is likely an airball. It is not surprising that this has come up because almost every time a word or phrase goes viral, someone will try to register it,” he says. “And I expect that the same thing will happen here as it always does, which is that it doesn’t get registered.”