Archived Press Release
Original Date: April 22, 2004
NBA SETTLES LEGAL ACTION, AVOIDS CANCELLATION,
BY ASSIGNING CONTESTED "NEW YORK RENS" TRADEMARK TO BLACK FIVES, INC.
(Greenwich, CT - April 22, 2004) Black Fives, Inc., owner of the BLACK FIVES® collection of historical African American
basketball team trademarks, announced today that NBA Properties, the consumer products arm of the National Basketball
Association (NBA), has given to the company all rights, title, and interest it had previously held in the name "New York Rens,"
which the league owned as a registered trademark.
The famous all-black New York Rens basketball team, which was based in
Harlem, won the inaugural World Professional Basketball Tournament in 1939, and is enshrined in the Naismith Memorial
Basketball Hall of Fame."Rens" was the nickname of the team, whose official name was the Renaissance Big Five.
Black Fives, Inc. had sought to cancel the trademark on grounds that the NBA had never used it, nor ever intended to do so. The
company also argued that the United States Patent and Trademark Office (USPTO) had approved the league's original
registration by relying on faulty evidence which inaccuratly implyed that the New York Rens basketball team was associated with
the early NBA. Black Fives, Inc. took this unusual legal action because the USPTO blocked the company's own version of the
trademark, citing that it was too confusingly similar to the NBA's registration. "Rather than face the forced abandonment of our
'Rens' application, we decided to challenge the validity of the NBA's registration," said Black Fives owner Claude Johnson.
Kimberly Reddick, Esq., an attorney with the law firm of Sterne, Kessler, Goldstein, and Fox in Washington, DC, represents
Black Fives, Inc. in trademark matters. "Few companies ever attempt trademark cancellation petitions," Reddick stated, "however,
careful review of the situation and the facts left no choice."
After preliminary filings, league officials abandoned their efforts and conceded, steering clear of a hearing with the Trademark Trial
and Appeal Board (TTAB), the USPTO department that adjudicates such matters. In addition, rather than allow the TTAB to cancel
their trademark outright, the NBA elected to assign it directly to Black Fives, Inc. "I was surprised by that outcome," said Johnson, "because some observers felt this was like 'David vs. Goliath.'"
Experts believe that NBA Properties, which relies on trademark
licensing income, wanted to avoid the bad precedent of having one of its registered trademarks cancelled. The league, 90% of whose players are black, may also have sidestepped possible negative publicity among African Americans,
particularly in Harlem, which was the original home of the Rens.
"After the hardships our team endured during Jim Crow, and with
the NBA being segregated during my time, what business did they have with the Rens name anyhow," asked 88-year-old John
Isaacs, a player on that 1939 championship team and a member of the New York City Basketball Hall of Fame. Isaacs, who co-hosts a weekly talk radio show in Harlem, is a popular and vocal figure in the community. "I think to him this represents a victory
for the people," explained Johnson.
"Although Black Fives, Inc. now owns the Rens name," Johnson added, "it really belongs to
Mr. Isaacs, to the other living Renaissance Big Five players, to those who are gone, including team-founder Robert Douglas, and to
the people of Harlem, who are everywhere."
Black Fives, Inc. pays Isaacs a royalty for the authentic Rens game jersey reproductions that it makes, and donates a portion of its
sales to charitable and civic causes. The company also envisions a Black Fives Era Basketball Museum in Harlem, akin to the
Negro Leagues Baseball Museum (NLBM) in Kansas City. "The NBA could help make that happen," Johnson says, "the same
way that Major League Baseball provides funding and support for the NLBM."
Johnson believes this would help acknowledge the
full historical role that African Americans have played in making the league what it is today.
Many of the NBA's most conscious stars agree, including Jermaine O'Neal of the Indiana Pacers. "For me," the Pacers center
said about Black Fives in a recent ESPN the Magazine interview, "it's respect for those who paved the road that I travel on now."
###
[Note that Ms. Reddick is no longer with Sterne, Kessler, Goldstein, & Fox, and is now a partner with the law firm of Bell, Boyd & Lloyd in Washington, DC.]
