By: Simone Regis

The Women’s National Basketball Association (“WNBA”) and two Major League Baseball (“MLB”) teams’ clash over trademark registrations boils down to the significance of one three-letter word.[1] In March 2025, the WNBA registered its “The W” trademark and sparked contention with two MLB teams regarding their own respective registered “W” marks.[2] According to the Chicago Cubs and Washington Nationals, both owners of registered stylized “W” marks, the word “The” constitutes the sole material difference between the WNBA’s proposed mark and their existing trademarks.[3] The WNBA is expected to answer this opposition to its application at the Trademark Trial and Appeal Board in October, unless the parties reach a settlement before then.[4] This issue underscores the importance of understanding the nuances presented by trademark law, especially as they fit into the realm of sports teams’ marks and branding.[5]

The Lanham Act is the primary federal trademark law, and it defines a trademark as a word, name, symbol or device that distinguishes the source of goods and services.[6] Potential trademarks have traditionally been classified as one of four categories: generic, descriptive, suggestive, or arbitrary or fanciful.[7] These categories are not definitive and operate as a spectrum.[8] A generic term refers to the basic nature of a product or a service as opposed to a particular brand’s characteristics.[9] Under the Lanham Act, a generic mark lacks distinctiveness and thus cannot be registered as a trademark.[10] However, marks with higher levels of innovation and originality, such as those deemed arbitrary or fanciful, are eligible to receive increased levels of legal protection because of their distinctiveness.[11]

Relevant case law has held that a trademark holder cannot have a monopoly on a term’s common meaning.[12] Descriptive terms are only protectable by trademark law if there is an acquired secondary meaning of the mark from the perspective of  consumers.[13]  Examples of descriptive marks include “Alo” for an aloe-vera-based gel or “Vision Center” for a company catering to consumers’ optical needs.[14]

A descriptive term that has a secondary meaning deemed protectable by a trademark law might still be available for fair use done in good faith to describe goods or services.[15] According to the Lanham Act, the mere use of a registered mark does not automatically constitute infringement.[16] The fair use defense ensures that descriptive trademark holders refrain from using their protections to entirely exclude others from accurately describing their own products.[17] Even if the WNBA’s “The W” is found to be a protectable descriptive term with a distinctive secondary meaning, the MLB teams may still be entitled to use the mark without being liable for trademark infringement so long as they do so fairly and in a good faith attempt to describe their own product.[18]

In contrast, a suggestive mark suggests a trait or characteristic of its applicable good or service, and the consumer must imagine or infer the specific nature of the product.[19] Suggestive marks are entitled to protection in the absence of proof of an acquired secondary meaning.[20] Accordingly, if the WNBA’s “The W” mark is found to be suggestive, obtaining trademark protection will be easier than if the mark is found to be merely descriptive.[21]

The business law community will feel the impact of this dispute irrespective of the specific outcome of the MLB’s opposition to the WNBA’s trademark application. If the mark is labeled as descriptive, the result will likely be that the WNBA receives trademark protection for “The W” with room for the fair use defense for other users of similar marks.[22] The fair use defense for similar marks may be available if “The W” is found to be a descriptive mark with an acquired secondary meaning.[23] However, if the WNBA’s “The W” is categorized as a suggestive term, it would be inherently distinctive and therefore protectable without proof of secondary meaning, making reliance on the descriptive fair use defense substantially less likely.[24] Sports marketing and branding companies will need to be increasingly intentional about avoiding confusion of their respective marks, as similarity is both possible and likely.[25] Business and intellectual property lawyers should accordingly advise their clients regarding the creation of marks that are sufficiently original to receive increased legal protection and exclusively monetize their names, marks, and symbols.

 

[1] See Kyle Jahner, WNBA’s Hope for a ‘The W’ Trademark Rides on a Three-Letter Word, Bloomberg L. (Aug. 31, 2026, at 05:00 ET), https://news.bloomberglaw.com/ip-law/wnbas-hope-for-a-the-w-trademark-rides-on-a-three-letter-word?context=search&index=12 [https://perma.cc/7VAD-9ADJ].

[2] Id.

[3] See id.

[4] Id. (following provisions outlined in 15 U.S.C. § 1067 for opposition to trademark registration).

[5] Id.

[6] Christopher T. Zirpoli, Cong. Rsch. Serv., IF12456, An Introduction to Trademark Law in the United States (2023); see also 15 U.S.C. § 1127 (providing the definition of a trademark).

[7] Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790 (5th Cir. 1983).

[8] See Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183 (5th Cir. 1980).

[9] See id.

[10] See 15 U.S.C. § 1052(f); see also Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (1976) (classifying generic terms as incapable of distinguishing goods and thus ineligible for trademark protection).

[11] See Abercrombie, 537 F.2d at 9–11.

[12] See, e.g., Abercrombie, 537 F.2d at 9 (explaining that generic terms are not protectable because granting exclusive rights would effectively confer a monopoly over language needed to describe a product); see also Zatarains, Inc., 698 F.2d at 791 (5th Cir. 1983) (noting that trademark law does not permit a producer to appropriate for exclusive use words needed by competitors to describe their goods).

[13] Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 793–94 (5th Cir. 1983).

[14] See generally Aloe Creme Lab’ys, Inc. v. Milsan, Inc., 423 F.2d 845 (5th Cir. 1970) (referring to marks that describe their respective products); Vision Ctr. v. Opticks, Inc., 596 F.2d 111, 118–19 (5th Cir. 1979) (holding that a plaintiff’s failure to establish a secondary meaning for a descriptive term makes the mark ineligible for protection).

[15] See Zatarains, 698 F.2d at 790 (explaining that descriptive use of a mark might not be infringement).

[16] See 15 U.S..C § 1115(b)(4).

[17] See Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183 (5th Cir. 1980) (emphasizing that the fair use defense is only available for descriptive terms when used in their ordinary descriptive sense rather than as source identifiers).

[18] See 15 U.S.C. § 1115.

[19] See Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 791 (5th Cir. 1983).

[20] Id.

[21] See id. (explaining that descriptive marks require proof of a secondary meaning, while suggestive marks do not).

[22] See 15 U.S.C. § 1115(b)(4); Zatarains, 698 F.2d at 790.

[23] See Zatarains, 698 F.2d at 791; § 1115(b)(4).

[24] See Zatarains, 698 F.2d at 791.

[25] Jahner, supra note 1.