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Greg WyshynskiESPN
The St. Louis Blues‘ Stanley Cup championship run had an ubiquitous soundtrack to it: Laura Branigan’s 1982 disco classic “Gloria,” which became their postgame victory song, while “Play Gloria!” became a rallying cry found on T-shirts, hats and other trinkets sold inside and outside the arena during the postseason.
The Philadelphia bar that inspired the Blues’ “Gloria” craze believes it’s only fair that it shares in the profits from those items.
The Jacks NYB, a bar in South Philadelphia, filed a trademark application with the United States Patent and Trademark Office for “Play Gloria” on May 8 that covered usage on T-shirts, and then a second one for “Play Gloria!” on June 1 that covered an assortment of items from hats and shirts to blankets and beverage cans.
Their legal representation has contacted St. Louis companies, including the Blues themselves, about sharing in the profits made from the sales of “Play Gloria” merchandise. In some cases, that’s meant cease and desist letters. The Blues have not been sent one.
“There are companies out there making enormous profits, potentially, off of a brand that The Jacks undoubtedly created, fostered and supported,” said Rob McKinley of Lauletta Birnbaum LLC, an attorney specializing in intellectual property, who’s representing the bar. “Our conversations with the Blues have been friendly and open.”
The Blues were selling “Play Gloria” shirts in their arena store during the playoffs, but as of Friday only had shirts that read “Gloria Gloria” for sale on their official online store.
The 1980s pop classic “Gloria” has been the St. Louis Blues’ victory anthem this season. Here’s the new “Play Gloria” shirt design debuting at Game 3 between the Blues and Sharks. https://t.co/OJR5Wu5hWy pic.twitter.com/OQc5DFNO4z
— Greg Wyshynski (@wyshynski) May 15, 2019
Mike Caruso, Vice President of Media and Brand Communications for the Blues, told ESPN that the action by The Jacks “has nothing to do with us, so no comment from us. But we heard that it’s dead. The folks from the bar never followed up.”
The Blues were inspired to adopt “Gloria” as their victory song after watching an Eagles’ NFC wild card game against the Chicago Bears at Jacks NYB on Jan. 6.
“We got together with some friends and watched the game with a bunch of Philly guys who grew up there,” Blues defenseman Joel Edmundson told stlouisblues.com. “They had a DJ in the bar and whenever there was a commercial break, they would crank the tunes and all these guys from Philly would get up and start dancing around. They played this song ‘Gloria’ a couple of times, and this one guy looked at the DJ and said ‘keep playing Gloria!’, so they kept playing it. Everyone would get up and start singing and dancing. We just sat back and watched it happen. Right there we decided we should play the song after our wins.”
McKinley said that origin story, and the subsequent “where it all began” coverage of the bar in St. Louis media and on NBC, bolsters their trademark claim.
“The minute you start saying it is the minute you start to acquire trademark rights. You can establish the rights later. You have to prove the first use of it,” he told ESPN on Friday. “I’ve been doing this for over 20 years. One of the things you have to establish under common law trademark rights is you have to establish that you own the trademark. That’s easy in this case.”
From the land of unofficially licensed merch pic.twitter.com/ay3uNCXSWk
— Greg Wyshynski (@wyshynski) June 1, 2019
McKinley disputed reports out of St. Louis that they have taken legal action.
“They didn’t file any lawsuits against anyone. It’s simply a business situation, where a company creates a valuable piece of intellectual property and wants to profit from it,” he said. “We didn’t try to sue the Blues. That’s patently false.”
According to Missouri Lawyers Weekly, which first reported on the letters from The Jacks NYB, a company called Arch Apparel initially stopped production on “Play Gloria” gear but then started selling them again after consulting their legal representation.
On Friday, The Jacks NYB put out a statement on its Facebook page emphatically denying they’ve “threatened to sue the St. Louis Blues ever” while defending its trademark dispute with Arch Apparel in particular.
“Here’s the truth. When we found out that other companies were using our PLAY GLORIA trademark to make money off of it, we reached out to them to try to make a deal with them. If they are going to profit from it, why shouldn’t we get a small piece of the pie. Wouldn’t you? Why should they keep all of the profits? In the case of Arch Apparel, rather than talk to us, they completely ignored us, then went on to make hundreds of THOUSANDS of dollars off of our #PlayGloria Trademark when fully knowing we owned the rights since our first letter in May,” the bar said in the statement.
McKinley said there’s been an “us against them” spin out of St. Louis regarding the trademark dispute.
“They look at the company as some out of town bar trying to sue a local St. Louis business. Why isn’t the spin that those companies pay some fair amount of their profits, to make more profits?” he said.
“To put things in context: If the St. Louis Blues owned the ‘Play Gloria’ trademark, and they sent cease and desist letters to unauthorized users of it, would we even be having this conversation? Unquestionably no. The St. Louis Blues, Anheuser Busch, the NHL … they respect the intellectual property rights of others.”