The Week in Review: A (Trade)Mark of Greatness

Among the innumerable plans, preparations and concerns an owner of a potential Triple Crown champion has to juggle in the three-week gap between the GI Preakness S. and the GI Belmont S., you can now add “contact an intellectual property attorney” to the dizzying to-do list.

It remains an open question as to whether the undefeated 'TDN Rising Star' Justify (Scat Daddy) will make his mark on American racing history by sweeping the Triple Crown. But the brawny chestnut colt's legal trademark status is already on its way to being recognized by the United States Patent and Trademark Office (USPTO).

That's because WinStar Farm–like the owners each of the previous four GI Kentucky Derby winners have done–has filed federal applications to protect Justify's name and image across different classes of merchandising, entertainment and services.

In plain language, that means no one other than the colt's rightful owners will be able to profit off anything relating to Justify's feats as a racehorse–and beyond.

“It's really a protective move to not allow people to capitalize on something that we've worked hard to make happen,” Elliott Walden, WinStar's president and chief executive, told TDN last week. “It's a way for us to have proper control over the merchandising element of things and to make sure that what's out there for merchandise is in line with our brand and our reputation.”

Justify's trademark applications were filed May 10, five days after his Derby victory. Even though it can take up to a year for the USPTO to grant recognition, the legal protection the process affords is retroactive to the filing date. Walden explained that while WinStar's name is on the trademark paperwork for Justify, “We're representing all ownership interests” among the colt's four partners.

“I think right after the Derby, [pitches for merchandise deals] started to heat up,” Walden said, adding that WinStar's 2010 experience with Super Saver (Maria's Mon) prepared him for the deal-making inquiries that come early and often after a horse wins the first leg of the Triple Crown. “It's not until they win a race like the Kentucky Derby where the magnitude of the race gets the mainstream merchandisers involved. There's t-shirts, hats, a lot of different things.”

Michael Doctrow, a Harrisburg, PA, attorney who typically represents large and mid-sized companies in trademark and copyright matters, has been retained by WinStar to handle trademarking for Justify. He first became involved with Thoroughbred clients in 2004 when he filed similar applications for the connections of Smarty Jones (Elusive Quality), and he handled the trademarking for 2016 Derby winner Nyquist (Uncle Mo). Beyond the obvious products that Walden mentioned, Doctrow can tick off quite an esoteric list of souvenir goods he's seen bootleggers try to peddle without permission.

“I've seen everything from sugar cubes to hand-knitted horseshoe covers to stackable dolls to anything you could possibly imagine,” Doctrow told TDN. “There is really an excitement that builds around Triple Crown horses, and there are an awful lot of people out there trying to make a buck off it and take advantage of it. As soon as Justify won the Kentucky Derby, we witnessed people selling things online with his image and name on them. And it only accelerates as we get closer to the Belmont S.”

Although Doctrow said the primary benefit is securing protection from trademark infringers, “the other issue that we've run into in recent years is people going out and applying to register the horse's name and trying to extort money out of the rightful owner to recover that trademark. So getting an application for registration filed as early as we possibly can makes a lot of sense from that perspective.”

The need for protection would seem to be most beneficial when a horse wins the Triple Crown, like the trademarked American Pharoah (Pioneerof the Nile) did in 2015. But Doctrow said another of his clients, the owners of the late 2006 Derby champ Barbaro (Dynaformer), benefited from USPTO protection in a way they'd never envisioned after Barbaro got injured in the Preakness and went through a very public, months-long attempt at recovery before succumbing to laminitis.

“People were selling 'Barbaro everything' to try and make money,” Doctrow said. “It was very, very important at that point for Roy and Gretchen Jackson to be able to ensure that merchandise sale proceeds were going to their intended charities rather than to people who were infringing on the trademark.”

Although Barbaro is a fairly unique name, the word “Justify” is common enough that it appears in some form in at least 24 separate trademark entries in the USPTO's online searchable database. Doctrow said the more universal the name, the more difficult it can be to make sure clients are properly protected.

“That's certainly part of our analysis. It does get a little difficult depending on the name,” Doctrow explained. “And that's the reason you would use an attorney to do this as opposed to just filing it yourself.”

While exact matches of words or phrases can and do overlap, the trademarking process allows for applicants to spell out exactly what they want to protect so conflicts with other rights-holders over similar names can be avoided.

This was useful in 2008 when Derby winner Big Brown (Boundary) had to be differentiated from a trademarked tagline coined by global shipping service UPS. And in 2014, the owners of California Chrome (Lucky Pulpit) had to make sure their USPTO application stated their trademark related only to horse racing so the Derby winner wouldn't infringe upon the “California Chrome” trademarked seven years earlier by an automotive company that makes decorative wheel covers.

Just like comparing Triple Crown champions from different eras can be difficult because so much changes over the decades, the same goes for attitudes relating to the trademarking of iconic Thoroughbreds. The late Penny Chenery, who co-owned the wildly popular Secretariat, said in a 2016 Triple Crown teleconference that the thought of protecting her champ's name never occurred to her during the 1973 Triple Crown chase.

“We didn't trademark him that early because merchandising for famous horses had not gotten established,” Chenery said. “We didn't do it while he was racing… Nobody had any ideas about that.”

People certainly do now. So be sure to pass the word about Justify's pending trademark projection to anyone you see on Saturday peddling souvenir t-shirts or hats out of a car trunk in the vicinity of Belmont Park.

Grass Greener for Catholic Boy

Five months ago Catholic Boy (More Than Ready) was my somewhat unorthodox selection to anchor the No. 1 spot on the season's inaugural TDN Derby Top 12 rankings. After a commanding dirt win in the nine-furlong GII Remsen S. at Aqueduct, Catholic Boy looked uncomfortable pressing the pace despite a runner-up try in his 2018 debut at Tampa Bay Downs, then he reportedly bled badly in the GI Florida Derby. His Classic aspirations were over before they really even got started.

As a Grade II winner last year on the grass (and a close-up fourth in the GI Breeders' Cup Juvenile Turf), it only seemed natural for Catholic Boy's connections to re-aim for grass races once the colt was ready to return to training, and Saturday's GIII Pennine Ridge S. at Belmont seemed as good a spot as any to launch a comeback. The only problem was that undefeated 'TDN Rising Star' Analyze It (Point of Entry) was aiming for the same race, and he figured to be about as solid a 1-5 shot as you can get.

Apparently, someone forgot to confess that tote board tidbit to Catholic Boy. The 4.4-1 second choice in the betting boldly bounded straight for the lead (a significant tactics change considering trainer Jonathan Thomas spent a great deal of time earlier in the spring explaining how Catholic Boy does his best running from much farther back) while Analyze It stalked menacingly just a few strides behind.

By the time the two favorites turned into the lane together, it appeared as if Analyze It would prevail based on the body language of the two. Significant shoulder-to-shoulder muscling for position between the three-sixteenths pole and the furlong marker had appeared to wear down Catholic Boy. But just when it appeared a certainty that Analyze It would wrest control for good, the leader lost a bit of spark a sixteenth from the wire, and Catholic Boy re-rallied on the outside to nail him in the final few jumps and win by a neck (this is the type of frantic finish you will either love or loathe when in-race betting finally comes to America).

“My horse has such a good heart,” winning jockey Javier Castellano said after the race. “You don't see too many horses like that when you check at the top of the stretch and they come back and win the race, especially at a mile and an eighth. I give a lot of credit to the horse and trainer. I didn't think he would win. [After checking] I was just riding for second place, but Analyze It started to stop and my horse continued, continued, continued. I thought 'I'm not going to win the race,' but it worked out great.”

A rematch could be in the cards for the GI Belmont Derby Invitational on July 7.