Harlem Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc.
1997 WL 33950, 952 F. Supp. 1084 (1997)
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Rule of Law:
A junior user's adoption of a senior user's trademark does not constitute reverse confusion trademark infringement if the parties' services, marketing channels, and target audiences are so dissimilar that there is no likelihood of consumer confusion as to the source or affiliation of the services.
Facts:
- Since its founding in 1962, Harlem Wizards Entertainment Basketball, Inc. ('Harlem Wizards') has operated as a 'show basketball' team, performing comedic and trick-shot basketball primarily for schools, camps, and charities.
- Harlem Wizards has used both 'HARLEM WIZARDS' and 'WIZARDS' on its uniforms and merchandise, which is sold only at its events and not in retail stores.
- The Capital Bullets Basketball Club ('Washington Bullets'), a professional National Basketball Association (NBA) team, plays competitive basketball in a formal league structure and markets its games and merchandise to the general public through mass media and retail outlets.
- In 1995, the owner of the Washington Bullets initiated a process to change the team's name, citing the negative connotations of the word 'Bullets.'
- Following a public fan contest, the team announced on February 22, 1996, that its new name, beginning in the 1997-1998 season, would be the 'Washington Wizards.'
- During the name selection process, the NBA conducted trademark searches that identified the Harlem Wizards and their use of the mark in connection with professional sports entertainment.
Procedural Posture:
- Harlem Wizards Entertainment Basketball, Inc. filed a lawsuit against Capital Bullets Basketball Club, the NBA, and NBA Properties, Inc. in the U.S. District Court for the District of New Jersey.
- The complaint alleged trademark infringement under the federal Lanham Act, the New Jersey Trademark Act, and common law.
- Harlem Wizards sought a permanent injunction to prevent the defendants from using the trademark 'WIZARDS'.
- The court conducted a bench trial to adjudicate the claim for a permanent injunction, having bifurcated the issue of damages.
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Issue:
Does a professional NBA team's adoption of the name 'Wizards' create a likelihood of reverse confusion with a pre-existing theatrical 'show basketball' team's 'Wizards' mark, thereby constituting trademark infringement under the Lanham Act?
Opinions:
Majority - Walls, District Judge
No. The Washington Bullets' adoption of the name 'Wizards' does not create a likelihood of reverse confusion because the services offered by the two teams are so dissimilar that consumer confusion is unlikely. To determine the likelihood of confusion, the court applied the ten-factor test from Interpace Corp. v. Lapp, Inc. The court found the factor regarding the similarity of services to be the most dispositive. It concluded there is a 'glaring dissimilarity' between the 'show basketball' performed by the Harlem Wizards and the competitive professional basketball played by the Washington Bullets in the NBA. Furthermore, the court found that the parties operate in completely different channels of trade, target different audiences, and that the Harlem Wizards' mark, while inherently distinctive as 'suggestive,' is commercially very weak with almost no consumer recognition. Although the marks themselves are similar or identical, the vast differences in the nature of the services, the markets they occupy, and consumer perception weighed heavily against finding a likelihood of confusion.
Analysis:
This case provides a key application of the reverse confusion doctrine within the context of non-competing but superficially similar services. The court's decision emphasizes that even when marks are identical, a trademark infringement claim will fail if the underlying services are fundamentally different in nature, function, and market presentation. It establishes that factors like the dissimilarity of services, channels of trade, and target audiences can be dispositive and outweigh the similarity of the marks themselves. This opinion serves as a guide for how courts should weigh the Lapp factors, highlighting that a holistic view of the market context is crucial in preventing trademark law from granting overly broad, monopolistic rights in a name across unrelated fields.
