"12th Man" at NFL Game Causes Trademark Flap

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During the playoff game on Sunday between the Denver Broncos and Pittsburgh Steelers, a skydiver parachuted into the stadium trailing a flag behind him that said ?12TH MAN.?  The flag reportedly was then flown at the stadium throughout the game.  Today, the Vice President of Texas A&M University posted to his Twitter account that Texas A&M owns the mark the 12TH MAN and that the University will defend its mark.

Texas A&M does indeed own the following federal trademark application and registrations relating to the 12TH MAN mark:

Mark      

App Serial No

Reg No

Identification of Goods or Services

HOME OF THE 12TH MAN

85/453601

 

Video game software; t-shirts; arranging and conducting athletic competitions; sport camps

12TH MAN

76/671314

3,354,769

Entertainment services, namely, conducting, organizing and promoting sporting events featuring football, soccer, baseball, softball, basketball, swimming, diving, equestrian, and tennis

12TH MAN

74/560726

1,948,306

Jewelry; entertainment services, namely organizing and conducting intercollegiate sporting events

12TH MAN

74/013898

1,612,053

Bumper stickers, post cards and note cards; towels; hats, t-shirts, polo-type shirts, golf shirts, sweaters, shorts, and athletic uniforms; college scholarship services

The test for trademark infringement is ?likelihood of confusion,? i.e., whether consumers are likely to be confused as to the source or origin of goods or services, or as to whether there is an affiliation or relationship between providers of goods or services when there is none.  In evaluating the likelihood of confusion, courts and the US Trademark Office consider several factors, including the (1) similarity of the marks; (2) similarity of the parties? respective goods and services; (3) trade channels through which the goods or services are sold; (4) the sophistication level of consumers; (4) circumstances under which purchasing decisions are made; (5) strength of the registered mark; (6) actual confusion; and (7) intent of the accused infringer.  Furthermore, the alleged infringement must involve use of the mark, or a confusing mark, in commerce.  Trademark law does not provide a monopoly on word usage but rather is designed to protect consumers and, to a lesser extent, to protect the goodwill of the owner of the trademark.

The primary question to be answered in the 12TH MAN analysis is whether the use by the Broncos was a commercial use.  Assuming for the sake of argument the use was a commercial use, then the various likelihood of confusion factors must be considered.  The marks are identical, however the ?306 and ?053 Registrations likely are not applicable because the goods/services with which the respective marks are registered include jewelry, intercollegiate sporting events, and bumper stickers, post cards, hats, t-shirts, etc, and college scholarship services.  As a general rule, the more dissimilar the parties? respective goods and services, the less likely that consumers would expect a single source of those goods or services.  For example, consumers do not expect a single source for faucets and airline services, thus there is no likelihood of confusion between DELTA Airlines and DELTA faucets.

The ?769 Registration includes among its goods and services ?[e]ntertainment services, namely, conducting, organizing and promoting sporting events featuring football . . ."  The marks are identical and the goods and services seem related.  However, the courts can, and often do, consider some or all of the other factors, such as the trade channels through which the goods or services are sold and the circumstances under which consumers make their purchasing decisions.  These two factors likely would weigh in favor of the Broncos, especially when considered in light of the services identified in the ?769  Registration ? promoting football games.  It seems unlikely a spectator is going to buy a ticket to a Denver Bronco home playoff football game, travel to and arrive at the stadium in Denver, CO, and then be confused as to who is organizing and promoting the game or whether there is an affiliation or relationship with a university in Texas.  With that being said, likelihood of confusion is a subjective standard which often makes it difficult to determine the issue of trademark infringement with certainty.  This case, however, seems to lean toward a finding of no likelihood of confusion and no infringement.

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