Yinz can rest easy: Your right to use the term “Yinzer,” even on T-shirts, is safe for now.
Yes, Columbus, Ohio-based clothing company Homage applied for a trademark for use of “Yinzer” in September, but that application was refused on Thursday. The U.S. Patent and Trademark Office found it was too similar to an existing trademark and would provoke confusion, explained Cecilia Dickson, an intellectual property attorney with Pittsburgh-based Webb Law Firm, who was not involved in the case.
“Even if [Homage] responded [to the refusal] tomorrow, there would be a couple months” before the trademark would be approved, said Ms. Dickson. “And then it would have a publication period during which opposition would be filed.”
That news could relieve tensions in places like the Looney Bin, a shop in the Strip District, where the merchandise includes shirts featuring the traditional term for old-school Pittsburghers — and where initial reports that the word "Yinzer" could become someone's intellectual property drew derision.
"It's a Pittsburgh thing. It is what we are," said Paul Dausch, owner of the Looney Bin for 20 years. "This guy comes from out of town and thinks he owns it. ... He can't use our word."
The trademark application, however, could still have hope, Ms. Dickson said: The existing trademark may actually be dead, and the USPTO has just failed to update its status. “So Homage might get it,” Ms. Dickson summarized.
Even if Homage wins the trademark, however, that gives it only limited rights. Even without formal trademark recognition, it can already sue to protect a “common law trademark,” and a registered trademark would just give it a presumption of prior-usage. Anyone who can show in court that it was already using the mark would probably be able to continue using it, at least in the way it currently uses the mark.
“So if you’ve been only operating in Pittsburgh since 2000, you could have first-use rights in Pittsburgh, but if you wanted to expand to Cleveland, you would potentially be foreclosed to that. It limits your ability to expand, but it’s not going to harm your pre-existing business,” Ms. Dickson said.
“Even if this were to be successful, at most they would have rights in the goods they have identified: T-shirts” added Ms. Dickson. Anyone else would be free to come along and make, for example, Yinzer-branded chipped chopped ham. In fact, she pointed out, “Yinzers in the Burgh,” the Strip District store, already owns that name for “retail store services.”
Finally, even new T-shirts that use the term “Yinzer” could potentially be safe from the trademark, if Homage wins it. “They [would] own the right to create T-shirts with source information indicating that it’s from the Yinzer mark,” but not to the word used “ornamentally.” For example, the Steelers could sell a shirt that says “Yinzer” in place of a player’s name on the back, and as long as the source of the shirt was clearly the Steelers, they would be in the clear.
The original trademark was held by Nicholas Seitz of California, who licensed it to Homage. Trademarks are governed by “use it or you lose it” rules, and when the trademark was up for review in 2017, an Homage shirt was submitted as the specimen of use. The USPTO rejected that specimen in August 2017, arguing that it was not clear that the term was being used as a trademark as opposed to simply an ornamental slogan, and the trademark office’s online search function does not show any more filings from Mr. Seitz.
Homage founder and CEO Ryan Vesler wrote in an email that the prior owner had decided to let the trademark lapse, so Homage decided to apply. Mr. Vesler did not comment on the USPTO’s initial refusal.
“I know the reaction from people has been that we might swoop in and try to shut down others utilizing ‘Yinzer,’ but we’ve never had any intention of enforcing the trademark,” he continued.
“I sincerely apologize to all those who have been offended -- that was never our intent,” wrote Mr. Vesler. “We love paying ‘homage’ to the city of Pittsburgh and want to be good partners in the community. Earlier this month, we partnered with the Jewish Federation of Greater Pittsburgh to raise money for the Impact Fund benefiting victims of the terrible tragedy that took place in October.”
Homage has reached out to a Pittsburgh nonprofit to propose assigning it the trademark, “so that royalty payments will benefit the community,” added Mr. Vesler.
Ms. Dickson said Homage would be within its rights to assign the trademark to whomever it wanted, or to license it to someone else.
Christopher Huffaker: chuffaker@post-gazette.com, 412-263-1724, or @huffakingit.
First Published: December 21, 2018, 6:01 p.m.
