United States: Sue-Per Bowl Shuffle IV: The Year In NFL-Related Intellectual Property Litigation

Last Updated: January 31 2018
Article by David A. Kluft

If you are a lawyer, there is a serious danger that someone at the Super Bowl party you attend is going to want to talk about an NFL-related legal issue. Did Cowboys owner Jerry Jones really have standing to challenge Commissioner Roger Goodell's salary package? What is the status of Colin Kaepernick's collusion lawsuit?

Actually, we can't help you with those questions, but we can get you ready to discuss recent NFL-related intellectual property disputes. IP certainly was not the biggest NFL legal story in 2017, but you would be hard pressed to find another area of the law that has so consistently offered such a wide array of lawsuits pertaining to the sport. Our fourth annual Sue-per Bowl Shuffle, a review of the year in NFL-related intellectual property disputes, is just what you need to get up to speed.

So here's the game plan. Laminate this article and place it next to the carrots ... there they are, those orange things between the beer and the cake. If the game doesn't live up to the hype and you get bored, just pull out this article and tell your friends about some interesting football-connected IP cases. If you read quickly enough, you will be done just in time for the Patriot's inevitable fourth quarter comeback.

No More Slants and Skins

This will probably be the last time we lead with the WASHINGTON REDSKINS trademark, because Elvis has finally left the building on that particular issue. In June, the Supreme Court decided the landmark case of Matal v. Tam, which was brought by an Asian-American band calling itself The Slants (and which you can read about in more detail here). The band's application to register its name as a trademark had been refused by the U.S. Patent and Trademark Office ("USPTO") because Section 2(a) of the Lanham Act prohibited the registration of "disparaging" marks. The Supreme Court did not decide whether the name was or was not disparaging (that's an argument we will no doubt continue to have, especially now that the Cleveland Indians are sort-of abandoning Chief Wahoo), but it did hold that Section 2(a)'s prohibition was an unconstitutional restraint on First Amendment rights, thus opening the floodgates for the registration of all sorts of offensive names – whether employed ironically or not.

What does this have to do with football? The REDSKINS trademark, of course. Native American groups have been complaining about the team's name since the 1970's, and litigating it since at least the 1990's. Amanda Blackhorse and other Native Americans used Section 2(a) to argue for cancellation of the mark because of its disparaging nature, and Blackhorse won ... at least at first. Both the USPTO's Trademark Trial and Appeal Board ("TTAB") and the Eastern District of Virginia, in Pro-Football, Inc. v. Blackhorse, agreed with her. However, while the team's appeal was pending before the Fourth Circuit, The Slants case was decided by the Supreme Court. On January 18, 2018, the Fourth Circuit issued a "game over" order, acknowledging that the Supreme Court had decided the issue, and vacating the cancellation of the team's registrations.

The upshot: Contrary to some reports, the team's ability to use the REDSKINS name and logo was never in doubt (that's not how trademark law works!). As a practical matter, the only thing that the decision changes is that the team can now enforce the registered mark against infringers without worrying about a potential Section 2(a) cancellation counterclaim. In fact, only days after The Slants decision, the NFL filed paperwork with the USPTO indicating an intent to challenge a Canadian entity's application to register WASHINGTON RED NATION for sports-related clothing. Now all the team needs is a quarterback and they're good to go for 2018.

Trying to Forget "A Gronking to Remember"

In 2014, Lacey Noonan (a pseudonym for a guy named Greg McKenna) self-published A Gronking to Remember, an erotic fiction in which a young couple's relationship is torn apart by a woman's sexual obsession with New England Patriots tight end Rob Gronkowski and "the primal power of the Gronk spike." The original cover of the book featured a photograph of a young couple, with Gronkowski goofily looming in the background. However, it turns out that Noonan didn't have permission to use the photo of the young couple; he simply "obtained the photograph from a public social media website."

The couple in question (who we know as "Jane and John Roe") filed suit against the author and the book's online retailers. The complaint alleged that the Roes have been humiliated and embarrassed by their association with the book, and included a count for violation of the Ohio right of publicity statute (i.e., for unlawful commercial exploitation of their name or likeness). In March 2016, the Southern District of Ohio issued a ruling in Roe v. Amazon.com that kept the claims against Noonan in the case, but dismissed claims against the online retailers on the ground that they were not considered "publishers" of the offending photograph for purposes of Ohio law. The Sixth Circuit affirmed on other grounds, namely that there was no evidence the Roes' image had "commercial value." You can read more about the case here. The case against Noonan is still pending.

Gronk was involved in another IP dispute in 2017, this one before the TTAB. Early this year, Gronk Nation (his company) tried to register a silhouetted logo of Gronk spiking a football. Nike opposed in Nike v. Gronk Nation, LLC, arguing that the mark was too close to the famous JUMPMAN silhouette used by Nike to promote basketball products. Gronk abandoned that application, and later filed a new one for a silhouette with a more distinct appearance.

The Resurrection of Spuds Mackenzie

Just when you thought he was out of it, this year a legend came out of retirement to check into the big game. James Harrison? Think again, and say welcome back to canine Bud Light mascot, Spuds Mackenzie. Spuds (played by a female bull terrier named Honey Tree Evil Eye) made his debut in 1987 during Super Bowl XXI, but he was retired in 1989 after Anheuser-Busch was accused of using the pooch to encourage kids to drink. The dog passed away in 1993 and, by 1995, the company's SPUDS MACKENZIE trademark registrations had lapsed.

In an ad during Super Bowl LI (last year's game), the beer maker engaged in what it thought was a harmless trip down commercial memory lane, bringing Spuds back for a new ad as the ghost of parties past in a sort-of kegger version of Dickens' A Christmas Carol. However, in the interim since Spuds' initial retirement, the SPUDS MACKENZIE trademark had been claimed and registered by Mark Thomann, an entrepreneur who revives dormant brands in order to slap them on t-shirts and key chains (watch out COLECOVISION, he's got you, too). Thomann brought a trademark infringement action in the Southern District of New York. The case, Spuds Ventures, LLC v. Anheuser-Busch, was settled shortly after it was filed. Rest in peace, Honey Tree.

Protecting the Shield

If there is one thing as certain as death and taxes, it is the obligatory January articles about how the NFL will enforce its marks around Super Bowl time. At the risk of repeating those dire warnings, let's look at some of the NFL's actual enforcement issues during the past year. In the category of "most likely to be sued by the NFL," we have the National Security Lock Company. The company apparently noticed one day that its initials ("NSL") were one letter off from "NFL," so it developed a logo depicting a padlock with the same color, design and shape as the NFL shield, and bearing the letters "NSL" in a similar font. When the company tried to register that mark, the NFL filed an opposition, and NFL Properties, LLC v. National Security Lock is pending. You may not be surprised to learn that National Security Lock appears to be proceeding without the benefit of counsel.

London has been a friendly venue for NFL games in the last few years, and it's getting more friendly for NFL trademarks as well. In the matter of QL Partnership Ltd, the NFL opposed the registration of SUPERBOWL UK for a tenpin bowling chain. The UK Registrar sided with the NFL, concerned that there was an "indirect" likelihood of confusion, to wit, that consumers might view Super Bowling as a brand extension of the Super Bowl.

The NFL has a different kind of opponent in the Super Bakery, a Pittsburgh company affiliated with Steelers great Franco Harris. The Super Bakery's previous attempt to register SUPER BOWL for whole wheat bread met an ignominious end. Undaunted, the bakery now has dozens of pending applications for EAGLEADE, PATRIOTADE, DOLPHINADE (ick!) ... you get the idea. The NFL so far has filed oppositions with regard to VIKINGADE and RAMADE. NFL Properties v. Super Bakery.

Barstool Sports has been a bit of an NFL gadfly, among other things selling t-shirts depicting Roger Goodell with a clown nose as a protest over Tom Brady's suspension. Apparently, the two organizations had another small tiff when the NFL started selling t-shirts that read "Sundays Are For [insert your team name here]." In December 2017, Barstool issued a cease and desist letter claiming that these shirts infringed its own registered SATURDAYS ARE FOR THE BOYS mark. The shirts came down off the NFL website, and Barstool claimed victory with what passes for class these days: bragging on Twitter that "We have conquered the NFL."

Brian Urlacher's Hair and Other Great Personae

Rob Gronkowski was not the only player whose persona gave rise to NFL-related right of publicity claims this year. During his playing career for the Chicago Bears, former linebacker Brian Urlacher was known for his clean-shaven pate. But after his playing career, he became a spokesperson for Restoration Holdings, a hair restoration company. A competing company, the Charles Medical Group, decided to get a hairpiece of the action by allegedly using Urlacher's name in its press releases and in the meta data of its website. Urlacher wigged out and filed a right of publicity case, Urlacher v. Charles, in Illinois State Court.

Meanwhile, Davis v. Electronic Arts is still alive in federal court, eight years after being filed. The case, brought by former players including LA Rams quarterback Vince Ferragamo and Cowboys tight end Billy Joe Dupree, alleges that the Madden NFL video games violated their right of publicity by including their likenesses and statistics in the game's "historic teams" mode. In 2015, the Ninth Circuit held that the First Amendment did not bar right of publicity claims over such realistic portrayals of former players in the game. EA Sports' petition for certiorari to the Supreme Court was denied, sending the parties back to the Northern District of California. In December 2017, the Northern District denied another motion to dismiss brought by EA Sports.

Somewhat similar claims, brought by Pittsburgh Steelers running back Cameron Stingily and other former college players over the use of their names and statistics in connection with fantasy sports websites, were dismissed by the Northern District of Indiana. The Court in Daniels v. FanDuel found that certain state statutory exceptions barred the claims, including that the information used on the sites was "newsworthy" and involved matters of "general public interest."

Let's throw the "greatest" sports persona of all time into this ring. Muhammed Ali died several months before Super Bowl LI aired on Fox last year. As a tribute, the network created a video opening to the program that depicted stirring footage of Ali and compared his "greatness" to the "greatness" of NFL players. The estate of Ali filed suit in the Northern District of Illinois, alleging that this was a commercial use of Ali's image, for which the network should have asked permission (and paid). Fox's failure to do so, the estate contends in Muhammed Ali Enterprises v. Fox Broadcasting, violated Ali's post-mortem right of publicity under Illinois law and constituted a false endorsement in violation of Section 43(a) of the Lanham Act. Currently pending is Fox's motion to dismiss, which argues that the Illinois court must apply California's anti-SLAPP statute and throw out the case.

The Twelfth Man

The Seattle Seahawks license the 12TH MAN mark from Texas A&M, reportedly for $18,000 a year. Is it worth it? Sure, it's a great metaphor for the energetic and supportive Seattle fan base. But protecting the trademark rights in a number appears to require so much vigilance that we should probably start calling the team's trademark lawyers the "13th Man." Here are a few of the matters that kept those lawyers busy this year:

  • The Seahawks successfully stopped a Washington resident from registering 12TH AVENUE SPORTS for retail sporting goods stores and "providing news and information in the field of sports." After the team opposed the registration, the applicant defaulted. Football Northwest, LLC v. Barry.
  • The Seahawks' opposition to a Washington company's application to register THE SPIRIT OF THE 12'S for bottled water is still pending. The team owns the same mark for charitable events and entertainment. Football Northwest, LLC v. PMS Water.
  • The Seahawks opposed a Seattle applicant's attempt to register TURN UP THE VOLUME TO 12 for t-shirts. The team alleged that one of its licensees had previously used the slogan for a Seahawks t-shirt, thus giving it some priority in the mark. However, the team withdrew the opposition after the applicant pled that it had even earlier priority. Football Northwest, LLC v. Brunelle.
  • The Puyallup, Washington resident who applied for THE 12TH HAWK mark for sports gear (clever, leaving out "SEA," but the team noticed) also defaulted after the Seahawks opposed. Football Northwest, LLC v. Tamer.
  • A resident of Seabeck, WA tried another approach: adding a space. He applied to register TW ELVES for athletic apparel. Nope, the Seahawks noticed that one too, and the team's opposition is pending. Football Northwest, LLC v. Watson.
  • The NFL, the Seahawks and Texas A&M all announced their intent to oppose the Bronco Wine Company's application to register the TWELFTH MAN mark for wine, and the application was quickly abandoned. Football Northwest, LLC v. Bronco Wine Company.
  • Finally, the Seahawks' own application to register 12 for restaurant and bar services was refused on the grounds it might be confused with the TWELVE mark owned by the Twelve Hotel in Atlanta. The refusal was affirmed by the TTAB. In re Football Northwest, LLC.

Who Owns Dat Website?

The history of the "Who Dat" idiom dates back long before the NFL existed, and its use as a chant by New Orleans fans ("Who dat? Who dat? Who dat say dey gonna beat dem Saints?") started sometime before 1983, when it was officially adopted by the team. In October of that same year, Who Dat, Inc. started selling WHO DAT-branded products around New Orleans, and later migrated the business online to www.whodat.com. In 2006, a group of die-hard Saints fans set up www.whodatnation.com as a forum for news and information about the team and its fans. The websites coexisted peacefully for eleven years, but last year Who Dat, Inc. filed a Uniform Domain Name Dispute Resolution Policy ("UDRP") complaint with the National Arbitration Forum ("NAF"), alleging that the site was "disrupting" its business by hosting a link to a competing t-shirt maker, and asking that the site be taken away from the fans. The NAF, in Who Dat?, Inc. v. Direct Privacy, was not impressed by this argument, held that there was no evidence of either bad faith or consumer confusion, and suggested that the complainant's only claim, if any, was against the competing t-shirt maker.

TitleTown

The Green Bay Packers had a little more luck wrestling away title to www.titletown.com from respondent Headquarters.com, Inc., which was employing the domain to promote website traffic monetization services. The Packers have been using the hubristic TITLETOWN mark to promote themselves since the early 1960's, and have several trademark registrations for the name. In a UDRP proceeding filed by the Packers with the World Intellectual Property Organization ("WIPO"), Headquarters.com argued that it had not registered the domain in bad faith because it was unaware of the Packers' TITLETOWN mark and because its original plan (which fell through) was to use the name descriptively for real estate services. The WIPO arbitrator in Green Bay Packers, Inc. v. Aranda had trouble swallowing that story, in part because the domain had from time to time been used to host information about the Packers, but also because the two owners of Headquarters.com were Wisconsin residents. The domain was ordered transferred, and it's now in the hands of the Packers' Titletown District, a development project adjacent to Lambeau field.

The Packers are also fighting over the TITLETOWN mark in the TTAB, opposing an application by the McClatchy media company to register TITLETOWN, TX for a Star-Telegram documentary series on high school football. The Packers' opposition, Green Bay Packers, Inc. v. McClatchy U.S.A., Inc., is pending.

Conan O'Brien was Just Kidding

On February 1, 2015, the Patriots won Super Bowl XLIX, arguably due to the Seahawks' inexplicable decision not to hand the ball to Marshawn Lynch, which led to a heroic interception by Malcolm Butler. On February 4, talk show host Conan O'Brien made the following joke during his monologue:

Tom Brady said he wants to give the truck that he was given as Super Bowl MVP . . . to the guy who won the Super Bowl for the Patriots. Which is very nice. I think that's nice. I do. Yes. So Brady's giving his truck to Seahawks coach Pete Carroll.

Not really a joke worth fighting over, right? Wrong. Freelance writer Robert Kaseberg claims that he put a substantially similar joke on his blog and Twitter feed the day before O'Brien delivered it. Specifically, Kaseberg posted: "Tom Brady said he wants to give his MVP truck to the man who won the game for the Patriots. So enjoy that truck, Pete Carroll." According to Kaseberg, this was not the only time O'Brien's writing staff had purloined his jokes, and he filed suit for copyright infringement in the Southern District of California.

After some discovery, O'Brien moved for summary judgment. Included among O'Brien's arguments was the assertion that, because the jokes contained so many unprotectable elements (e.g., Tom Brady's real life statement, the fact that Pete Carroll coaches the Seahawks, etc.), they were entitled only to "thin" copyright protection, and therefore there was no infringement unless the jokes were "virtually identical." In Kaseberg v. Conaco, the Court dismissed some of the case, but not the part pertaining to the Brady joke. The Court held that the small protectable part of the joke, the fictionalized implication that Brady would give his truck to Carroll, was virtually identical in both versions.

Hey, That was My Idea!

As usual, several active NFL-related IP cases concerned allegedly stolen ideas. Attorney Nick Katsoris is the author of the Loukoumi the Lamb children's books. Just like all lawyers, Loukoumi is "a fluffy little lamb that just wants to make the world a better place." Katoris had teamed up with the IMG talent agency to pitch a project to Nickelodeon in which children would be encouraged to draw a picture of themselves with Loukoumi and complete the phrase: "I want to be a ________ because _____". Nickelodeon declined to participate in the project with Katsoris, but subsequently teamed up with IMG to launch an allegedly similar program called "I wanna be..." (later renamed "All in"), starring and executive produced by Carolina Panthers quarterback Cam Newton. Katsoris attempted to engage IMG in arbitration pursuant to the terms of an agreement he had signed with the agency, but this attempt was apparently rebuffed. In 2016, Katsoris filed a complaint against IMG and Nickelodeon in the Southern District of New York, alleging that the program infringes both his copyrights and trademarks. After the defendants moved to dismiss, Katsoris countered with a motion to compel arbitration. In Katsoris v. WME IMG, LLC, the Court granted this motion as to IMG. Katsoris and IMG proceeded to arbitration, and the Court stayed the case against Nickelodeon in the meantime.

In Reed v. NFL, the Central District of California dismissed an implied contract claim asserting theft of an idea by the league. Ricky Reed had allegedly submitted to the NFL his idea for "NFL: The Next Generation," which he described as the "football version of American Idol." The NFL claimed not to have read his proposal, but Reed called this "a lie that only a fool would believe" and alleged that the NFL used his idea to create "Undrafted," a television program about the struggles of undrafted college players who are still pursuing their NFL dreams. On appeal, the Ninth Circuit summarily affirmed the District Court, holding that Reed failed sufficiently to allege that he had conditioned his submission of the idea upon an obligation to pay if it was used.

Advertising agency Betty, Inc.'s proposal to Pepsi gave rise to another idea dispute. Pepsi's 2016 Super Bowl ad began with the close-up of a jukebox, followed by the transcendent Janelle Monae dancing from room to room, each room encompassing the music and style of a different decade. Betty, Inc. alleges that the ad was derived from a written proposal it pitched to Pepsi the previous year, called the "human jukebox," in which a "hero character" moves from location to location within a jukebox, each location featuring the "Joy of Pepsi" jingle in a different musical genre. In September 2017, the Southern District of New York, in Betty, Inc. v. PepsiCo, Inc., denied Pepsi's motion to dismiss Betty's copyright infringement claim. The Court could not conclude as a matter of law that the final commercial was not substantially similar to the written proposal.

Betting on the Raiders

The Oakland Raiders' potential move to Las Vegas continues to encourage a boomlet in trademark speculation. Here are a few of the silver and black IP disputes active in 2017:

  • A Texas applicant gambled on an application to register CASINO RAIDERS for hats and t-shirts. After the Raiders opposed, the applicant folded. The Oakland Raiders v. Bender.
  • Another applicant defaulted on his attempt to register RAIDERS BABY RAIDERS for bumper stickers and t-shirts, after his application was met with a swift opposition by the team. The Oakland Raiders v. Keene.
  • A Las Vegas entrepreneur applied to register SILVER & BLACK NATION for (surprise!) t-shirts and the like. The Raiders, who own the RAIDERS NATION mark and already sell "Silver and Black Raiders Nation" shirts, filed an opposition, and the matter is pending. The Oakland Raiders v. Hong.
  • Of course, even if the Raiders move, they will still have been BORN IN OAKLAND, which is perhaps why they applied to register that mark for clothing and entertainment services. But the Columbia Insurance Company, a Nebraska corporation, came forward claiming that the registration would be confusingly similar to its own registered BORN marks for clothing (it apparently owns the Born Shoes brand). That opposition is pending. Columbia Insurance Company v. The Oakland Raiders.

(Alleged) Fakes and Frauds

Counterfeit products are always going to be a part of the NFL IP experience, and this year was no exception. In U.S. v. CK Productions, the U.S. Attorney's office in Boston put a stop to a New Hampshire screen printing company responsible for shipping 1,700 counterfeit Patriots t-shirts across the border into Massachusetts just in time for Super Bowl XLIX. The defendant company pled guilty and the prosecutors recommended a fine of $68,000, a big amount considering that the t-shirts were worth only $29,000, but a small amount considering that the statute would have allowed a fine up to $5 million.

In Handy Liquor v. California Alcohol Beverage Control Dept., a California liquor store had its license suspended for among other things selling counterfeit 49ers baseball caps for $7.99. An investigator for the officially licensed cap maker walked into the store and asked if they were fake. The obliging clerk helpfully pointed out the counterfeit mark (thus proving infringement), advised the investigator that they were indeed fake (thus admitting intent), and indicated that the authentic cap would run about $40 (thus providing proof of harm). The suspension was affirmed.

Meanwhile, legendary quarterback Joe Theismann finally rid himself of a case alleging another kind of fake. Theismann served as the celebrity spokesperson for Super Beta Prostate, which was marketed as a treatment for the symptoms of benign prostate hyperplasia. Back in 2013, a group of plaintiffs filed a class action suit in the Eastern District of California against Theismann and the makers of the product, alleging the product's effectiveness was falsely advertised and that it should have been characterized as a "new drug" subject to FDA scrutiny. The complaint was originally dismissed in 2014, but the Ninth Circuit in Luman v. Theismann revived certain claims against the company. The Court made clear that this revival did not include claims against Theismann who, as a mere spokesperson, was not an appropriate defendant under California's false advertising laws. On remand in 2017, the District Court dismissed the remaining claims pursuant to the primary jurisdiction doctrine, because whether or not the product was a "new drug" was a matter only the FDA could decide.

Stealing a Glance

Photographer Justin Goldman was not happy that his photo of Tom Brady walking with members of the Boston Celtics appeared without authorization on Yahoo.com, Breitbart News, the Boston Globe website and elsewhere. Goldman brought a copyright infringement action in the Southern District of New York. The media defendants jointly moved to dismiss, arguing in part that their use of the photograph was a fair use, because it depicted the newsworthy event of Tom Brady's potential role in the closely watched off-season moves of NBA star Kevin Durant. The defendants also argued that they never actually hosted unauthorized copies of the photograph, but rather the image appeared on their websites only as embedded content provided by (and hosted by the servers of) a third party news service. In Goldman v. Breitbart News Network, the Court indicated that these issues were too fact-heavy to decide on a motion to dismiss, but the defendants' motion for partial summary judgment on that issue is now pending.

Taking it on the Chin

Sportstar Athletics, which makes a chinstrap technology worn by the likes of Drew Brees and Ben Roethlisberger, filed a patent infringement suit in the Southern District of Texas. The complaint in Sportstar Athletics v. Wilson Sporting Goods alleged that Wilson's hard cup football chinstrap infringed Sportstar's "strap splitter" patents, because both products allow a player to affix a single chinstrap to multiple hookups on the helmet instead of buying chinstraps for each kind of hookup. The parties fought over Sportstar's definition of "strap splitter," and whether it is essentially equivalent to Wilson's "strap divider." In September, the court determined that the products achieved the same result but through different functional means, and issued a judgment of non-infringement.

More Trademark Tussles

It seems that every year, there are more and more spats over NFL-related trademarks in the TTAB. Here are a few of the disputes we haven't already discussed:

  • Kansas City Chiefs' linebacker Tamba Hali applied to register TAMBA HALI for jewelry and apparel, but the application was refused because of the preexisting TAMBA mark for apparel and surfing accessories. Hali argued that he was a well-known football player whose full name was unlikely to be confused with the single word TAMBA mark, but the TTAB held that there was no evidence that consumers of the relevant products know who he is. The TTAB also agreed with the examiner that TAMBA was the dominant portion of each mark, and that the goods in question were either identical (clothing) or related (jewelry). The refusal was affirmed. In re Hali.
  • Another applicant abandoned its attempt to register GO BIG BLUE! for horse-related educational services, after the New York Giants, the NFL, Duke University and the University of Kentucky all indicated an intent to oppose. The applicant, Calumet Farm of Kentucky, may have been seeking registration of the mark in relation to its stud horse, Big Blue Kitten, which you can rent for breeding at $15,000 a pop (but please don't shout GO BIG BLUE! during the rental, because that's just weird). NFL Properties, LLC v. Calumet Farm.
  • The NFL has launched a raft of TTAB oppositions against Joshua Morrell of Philadelphia, who is attempting to register a ton of trademarks for apparel with the name of a professional sports team followed by USE ONLY (e.g., EAGLES USE ONLY). In NFL Properties LLC v. Morrell, the applicant's hometown squad teamed up with the Texans, Jets, Cardinals, Rams, Bears, Pats and even the Giants to oppose these marks, alleging that Morrell intends to use the registrations to sell a bunch of knockoff goods. A consolidated opposition is pending.
  • The CALIFORNIA RAMILY mark for athletic apparel was opposed by the Los Angeles Rams. The mark consists of a mock version of the California flag with a tought looking ram in the center. The Los Angeles Rams claim that "Ramily" has long been used as nickname for its fan base. The applicant's lone affirmative defense is: "The state flag of California contains a Ram." I thought it was a bear, but what do I know. By the way, in case you think the Rams are overreaching here, it should be noted that complaint contains tweets from the applicant indicating that indeed, his intention is to use the mark in connection with Rams football t-shirts. The matter is pending before the TTAB. The Los Angeles Rams, LLC v. Torres.
  • Who wants an icy cold CHARGERITA? Not the Chargers Football Company, which indicated its intent to oppose registration of the CHARGERITA energy drink mark, leading to the application's abandonment. Chargers Football Company, LLC v. Bell.

SKOL!

Let's end with the Minnesota Vikings, who had an up-and-down year, an even more up-and-down playoff run, and whose fans now have to play host to a game that the team was just one off-day away from playing in. The Vikings applied to register the SKOL mark for apparel ("Skol, Vikings" is the team's official song, "Skol" being a Danish-Norwegian-Swedish term for "cheers" or "good health"). The application was denied by the USPTO because of the SKOLTECH mark for apparel, which had been registered by an educational institution in Moscow in 2016. Last year, the Vikings initiated a cancellation proceeding against the SKOLTECH mark, arguing that the Moscow entity is not actually using it in commerce. The matter is pending. Minnesota Vikings Football, LLC v. Autonomous Non-Profit Organization for Higher Education Skolkovo Institute of Science and Technology.

And what about the Minneapolis Miracle? The day after that game, the Vikings applied to register MINNEAPOLIS MIRACLE and MINNESOTA MIRACLE for all sorts of goods and services. But two days after that, backup-to-starter quarterback Case Keenum, who threw the miracle pass, applied to register the same two marks, plus MIRACLE OF MINNESOTA, for some of the same goods (e.g., football helmets). Are we headed for a quarterback controversy in Minnesota? Yes, and maybe a trademark dispute as well.

Editor's Note: You can see previous installments of the Sue-per Bowl Shuffle here (2015), here (2016), and here (2017). Also . . . Go Iggles!

To view Foley Hoag's Trademark and Copyright Law Blog please click here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions