Naismith Memorial Basketball Hall of Fame, Inc. v. Naismith 2019s Pub & Pretzel, Inc. (19-cv-30039).

James Naismith created the game of basketball in Springfield, Massachusetts in 1891. Beginning at least as early as 1959, the Hall of Fame began operating a basketball hall of fame in the same town, named for James Naismith. The Hall owns a number of trademark registrations involving the name Naismith, including NAISMITH MEMORIAL BASKETBALL HALL OF FAME, NAISMITH BASKETBALL HALL OF FAME, NAISMITH COACHES CIRCLE, NAISMITH ORANCE, and several logo marks that incorporate 201cNaismith 201d in the logo. The Hall accuses Naismith 2019s Pub & Pretzel of deceit as to affiliation, false designation of origin, sponsorship or approval, dilution, and unfair competition, under both the Lanham Act and Massachusetts common law, asserting that the name of the restaurant, located a mere 1.3 miles from the Hall of Fame, was intended to trade off the good will of the Hall. The Hall notes that the restaurant is decorated with basketball memorabilia, including a number of images of James Naismith. The Hall 2019s claims all rely on 201cNaismith 201d being the dominant part of both its registered marks and Defendant 2019s name. Notably, the Hall does not indicate any direct connection with Naismith or his family. Also noteworthy, the first of the registrations was initially refused over a prior registration to 201cNaismith Awards, 201d with the examining attorney noting that the dominant part of each was 201cNaismith. 201d The Hall overcame the rejection through a consent agreement in which each asserted that there was no confusion between the two. While that might seem inconsistent with the current lawsuit, the 201cNaismith Awards 201d took place in Atlanta, not Springfield, and had coexisted at the time for nearly twenty years with no confusion noted.