In April, the St. Louis startup Arch Apparel hit retail pay dirt with a new T-shirt. It bore the words “Play Gloria” — a reference to the late singer Laura Branigan’s 1982 pop hit that, improbably, became the St. Louis Blues hockey team’s unofficial anthem during its 2019 Stanley Cup-winning season. Sales exploded.
“It was on a different level — a different stratosphere — from anything we had done before,” said Arch owner-manager Aaron Park. Whereas a typical daily intake had been 100-200 orders, Park said, the Play Gloria shirt drew approximately 5,000 orders within 24 hours.
But soon, Park received something in the mail that made his heart race — at least at first. It was a cease-and-desist letter from an attorney representing The Jacks NYB — the bar in Philadelphia where several Blues players first adopted “Gloria” as their inspirational song of the season. The bar itself had begun selling its own shirts and claimed a trademark in the “Play Gloria” name.
Arch Apparel wasn’t the only local entity to be contacted by The Jacks. Park said that to his knowledge, the Blues received a letter, too; a spokesman for the hockey team did not respond to an interview request. Center Ice Brewery, which now offers a “Play Gloria Hazy Pale Ale,” did not receive a cease-and-desist, according to head brewer Matt Deatherage, but the bar did reach out about a possible partnership.
The bar’s attorney, Robert A. McKinley of Lauletta Birnbaum in New Jersey, wrote in an email that he could not get into details, but he could confirm that “letters have been sent to more than one entity regarding The Jacks NYB rights to the PLAY GLORIA trademark.”
According to the Blues’ website, the team’s infatuation with the song dates back to January, when several Blues players visited The Jacks NYB to watch a football game. During commercial breaks, the DJ played “Gloria,” which caused so many patrons to dance that someone finally yelled to the DJ: “Keep playing ‘Gloria!’” So the DJ did, and the players decided right there to start playing it in the locker room after their wins.
McKinley said the owners of The Jacks NYB are “thrilled that their role in this very unique story will undoubtedly be a part of the Blues’ lore for years to come. However, they cannot sit idly by while others, without authorization, capitalize on their intellectual property.”
He said that to his knowledge, St. Louis hockey fans support the bar, and that they were the ones who informed the bar about the other entities selling “Play Gloria” products.
The Jacks NYB filed its first trademark application on May 8 with respect to graphic T-shirts; a second application on June 1 related to a broad assortment of goods and services, from hoodies, hats, trash cans and mugs to billboard advertising. McKinley said the bar enjoys “common-law trademark rights” to “Play Gloria.”
“Many business are seeking to capitalize and profit from the goodwill The Jacks NYB has created in the PLAY GLORIA trademark,” McKinley wrote. If these entities do not respect the bar’s IP rights or do not pursue negotiating to receive authorization to use the trademark, the bar reserves the right to take legal action.
Upon receiving the C&D letter, Park said, Arch Apparel initially stopped production but started up again after speaking to its attorney, Danielle M. Durban of Capes Sokol.
Durban declined to delve into the specifics of the Arch Apparel matter, but speaking in general terms, she said the purpose of any trademark — whether it’s the Nike swoosh or the McDonald’s golden arches — is to identify the source of the products or services. The act of putting the words “Play Gloria” on a T-shirt gives no information about who made the T-shirt; it would be different, she said, if “Play Gloria” were on the tag as a brand-identifier.
Durban said that after any mark’s first “use in commerce,” it gains some common-law protection, but the protection will be limited to that geographical area of use.
A trademark such as McDonald’s has been ubiquitous for years, Durban said, so its customers know what to expect. But “for a business exclusively located in one locale to sell a couple items in a completely different locale, there likely is not that same brand awareness and, thus, common-law trademark protection likely has not developed,” she said.
Durban said another type of intellectual property that is relevant here is the copyright. It would indeed be possible to copyright a particular visual expression of “Play Gloria” such that if someone tries to replicate it, the original creator could sue for copyright infringement.
“Each person’s expression is copyrightable,” Durban said. As for Arch Apparel, she said, “They totally believe that there’s a piece of the pie for everyone. It’s just a matter of everybody bringing their own artistic spin to the table so customers can choose which one appeals to them.”
In the meantime, Park said, his three-year-old apparel company has learned a lot from the “Play Gloria” episode.
“We weren’t equipped for what we experienced,” he said, “but we will be when the Cardinals win the World Series this year.”