DuetsBlog

Collaborations in Creativity & the Law

Crafting an Effective Fair Use Defense

Posted in Advertising, Dilution, Fair Use, Famous Marks, Food, Infringement, Marketing, Trademarks

The beer industry is rife with trademark legal issues. We’ve discussed quite a few here, including disputes over brewery names, attempts to register as a trademark the design of a beer glass, or the longstanding issue of whether all alcoholic products are related for likelihood of confusion purposes.

Because of the importance of the beer industry in the trademark world, I am required to purchase and sample the numerous offerings of the local breweries here in Minnesota and Wisconsin. Last weekend, while on one of these work-related trips, something caught my eye at the store:

Craft Singles

These “singles” – also known as “bombers” – are 22 ounce bottles that are popular among smaller breweries.

For those who grew up in households of organic and unprocessed foods, the refrigerator plays off of the classic cheese slices shown below:

Kraft-American-Singles-x-600

Funny, I don’t remember my parents making me “grilled cheese product sandwiches,” but apparently, that’s what they were.

The use appears to be a parody of the Craft Singles brand. While parody isn’t a defense to trademark, it is another way of saying that there is no likelihood of confusion. We’ve discussed other potential parodies here, such as the Subway parody of ZOMBIES eat flesh, Verizon’s parody of the De Beers shadow commercials, and others.

The analysis for a parody is largely the same as any other product: is the use of the mark likely to create confusion or mistake as to the source, sponsorship, or some other connection with the owner of the other mark. Although the marks are essentially identical, the goods appear unrelated. I am unaware of any evidence that consumers are apt to presume that beer and cheese, sorry, cheese product, emanate from the same source. Well, other than beer cheese soup as a “complementary use. ”

What do you think, effective parody? Cause for Kraft’s concern? Or do you just really want a beer and a grilled cheese right now?

BRANDING FOR STARTUPS

Posted in Branding, Goodwill, Guest Bloggers, Marketing, Mixed Bag of Nuts

- Mark Prus, Principal, NameFlash

I’m often hired for name development by entrepreneurs who are starting a business. However, many founders take the “do-it-yourself” approach to name development. Sometimes that works for them, but all too often they make a horrible mistake that is easily preventable.

My basis for this conclusion?

Here are a few of the names chosen by startup companies last year (data from CrunchBase.com):

  • Zairge
  • Xwerks
  • Synthorx

I defy you to guess what the business is selling. Go ahead…try…I’ll wait. Can’t do it? I’m not surprised. You won’t get a clue from the name, and unless you already know about these companies you are taking a wild guess.

I’m not picking on these companies for their names because there are many others with similarly confusing names. For the record, Zairge (zairge.com) is a mobile property management system that simplifies and accelerates productivity for the owner, employee and guest. Xwerks (xwerks.com) offers elite nutrition for elite athletes. Synthorx (synthorx.com) is a biotechnology company using synthetic biology to synthesize solutions.

While I have no information about how the names for these companies were developed, I strongly suspect they may have fallen into the “.com conundrum.” Many startup companies I work with insist on having a one word name with one or two syllables that has a .com website available. That virtually guarantees the use of nonsensical clusters of letters that result in a name without relevance. Letting the availability of a .com domain drive your name selection is a huge branding mistake.

Consider these names of these other startup companies from CrunchBase.com:

  • Beep
  • Shout
  • Swish

These three have nice, short, memorable names. They are common words that are easy to pronounce, read and spell. Beep is a startup that sells a device that facilitates synchronized music in every room. Shout builds marketplaces for passionate people. Swish offers mobile payment solutions. In each of these cases, the company has chosen a relevant name that builds a brand around the benefits that their product offers. But because they chose a common word they don’t have the “exact word” .com address.

So which is better: Having a simple, easy-to-pronounce name that has meaning, or having a name that gets you a one word .com address? My 25+ years of branding experience tells me that a name that has meaning is infinitely more important than a name chosen because you can get a single word .com address.

You can ALWAYS get a .com address that makes sense. The websites for Beep, Shout and Swish are: are www.thisisbeep.com, http://useshout.com, and http://swishme.com. The companies have found a clever way to get a meaningful name AND a relevant website.

You can do the same. Add “my” or “the” to the front of your name or add “online” or “world” to the end of it. If you need other ideas give me a shout and I’ll help.

But please don’t pick a name that looks like a random selection from alphabet soup just because you can get a .com domain. You will only create confusion and that is never a good thing.

Samsung Boards Brandverbing Bandwagon

Posted in Advertising, Articles, Branding, Genericide, Loss of Rights, Marketing, Technology, Trademarks, USPTO

Samsung appears to be the most recent brand to board the brandverbing bandwagon with its Galaxy Note 4 advertising campaign, asking the critical question: Do You Note?

SamsungDoYouNote

Samsung has federally-registered in the U.S. the trademark GALAXY NOTE for smart phones, mobile phones, and tablet computers — note the absence of a disclaimer of NOTE, meaning that term is believed to be distinctive, not descriptive or generic for the goods (at least for now):

GalaxyNoteAnd, Samsung’s DO YOU NOTE? trademark application publishes for opposition tomorrow.

As you know, we have welcomed the challenge by marketing types to press the edges and not fall into the assumed knee-jerk legal trap when it comes to weighing the true risks of genericide based on the verbing of brands, but if you’re not Google, this recommended reading from our archives — on the subject of trademark verbing and the risk of genericide, is still highly useful:

Who will be the next to jump on the brandverbing bandwagon? How long will the ride last?

Get to the Chopper: A Service Mark on a Helicopter?

Posted in Advertising, Branding, Marketing, Non-Traditional Trademarks, Product Configurations, Television, Trademarks, USPTO

When a business uses its trademark in connection with an ordinary billboard advertisement, should it try to register the billboard as another trademark unto itself?  I venture that nearly every trademark attorney would say no.  But what if the billboard was a helicopter?

MedLegal Network, out of Santa Monica, California, promotes personal injury and worker’s compensation legal services for Spanish-speaking consumers under the mark GRUPO MEDLEGAL, and also uses a Lion Design.   To advertise its services, MedLegal has sponsored traffic helicopters for Spanish-language television stations.   (I am reminded of the Sklar Brothers’ classic stand-up routine on “Chopper Four.”) They also feature these helicopters in television advertisements, as shown in two separate YouTube videos.

They’ve  already registered the MEDLEGAL word mark and have a pending application for a Lion Design, so what’s next?  Well, look no further than Application Serial No. 86/489,863, for” general business networking services” and “providing attorney referrals,” among other services.

According to the application, “The mark consists of the words GRUPO MEDLEGAL and a stylized depiction of a lion as placed on a helicopter.”   As the dotted lines indicate, no claim is made “to the specific shape of the helicopter.”

Add another to the file of non-traditional trademarks.  But is it registrable?  In order to register this mark for services, MedLegal must provide a specimen must “show[s] an association between the mark and the services for which registration is sought.”  Showing off the mark itself is not enough — the specimen needs some additional material referencing or describing the services.  Here, MedLegal provided four specimens — two screenshots of the aforementioned YouTube videos, and two shots of the helicopter itself, with MedLegal’s phone number displayed on the fuselage.

Is this an adequate specimen?  The videos themselves do appear connect the actual helicopter to MedLegal’s services (at least to a non-Spanish speaker).  And I’ve seen the USPTO accept far worse specimens.  But I wouldn’t be surprised to see this application receive an Office Action from a perplexed Examining Attorney.

I’m also left to wonder: what’s the benefit of this registration?  This is a very specific, and therefore narrow, mark.  A registration provides some protection for the GRUPO MEDLEGAL word mark, but is not nearly as effective as a standard character mark.  It will likely only prevent others from using wording similar to GRUPO MEDLEGAL and a Lion’s head design…on a helicopter.  And MedLegal is now obligated to continue to run advertisements featuring the helicopter in this configuration to support its use of the mark in future maintenance filings.

In essence, MedLegal isn’t much better off with this registration compared to the registrations they own now.  Their current Lion Design application, should it mature to registration, would be enough to go after a confusingly-similar mark, whether it was on a helicopter, a billboard, or a space ship.

The inimitable John Welch frequently asks on the TTABlog, “WYHA?” (Would You Have Appealed?).   After reviewing this mark, I’m left to wonder: Would You Have Applied?

Web Developer Swipes Left on TINDER

Posted in Infringement, Law Suits, Social Media, Trademarks

Tinder received an early Valentine’s day note in the form of a lawsuit from a lesser known web developer named WildFireWeb.

For those of you coupled folks hopefully unfamiliar with the service, Tinder is a free dating app for your smartphone where users receive a profile comprising a picture (although you can upload several pictures) and a little information about a potential match within a designated radius of their location.  The user  “swipes right” if they are interested in the person, or “swipes left” if they want to pass.  If the user “swipes right” on the person, and the person also has swiped right on the user, then miraculously this dating app has created a match and the two can message each other through Tinder’s system.  You otherwise cannot converse with another Tinder user unless you both swiped right on each other’s profile.  Somewhat of a modern version of trying to talk to an attractive person at a bar without actually having to be there and a bit easier way to tactfully avoid an undesired admirer. If you need more information (or a laugh), Conan O’Brien and Dave Franco’s comedic look at Tinder is worth a view.

Tinder, Inc. owns a trademark registration for TINDER for “downloadable software in the nature of a mobile application for internet-based dating and matchmaking; downloadable software in the nature of a mobile application in the field of social media, namely, for sending status updates to subscribers of web feeds, uploading and downloading electronic files to share with others.”

http://i.huffpost.com/gen/1674498/thumbs/o-TINDER-APP-facebook.jpg

Its app icon appears like this:

 

WildFireWeb owns a prior trademark registration for TINDER for “Application service provider (ASP) featuring software for use in editing and creating web-site content; computer services, namely, editing websites for others; application service provider (ASP) services featuring software for use by others to create photo galleries, news feeds, blogs, advertising, and standard web content in hypertext markup language (HTML) on web sites; application service provider (ASP), namely, hosting computer software applications for others.”

 

WildFireWeb‘s “about Tinder” page currently looks like this, and according to Archive.org, they have been using the reddish orange and fiery dot on the “i” since at least  February 2012, prior to Tinder’s application being filed:

For a web development company that apparently works with small businesses and youth programs, any potential for association with developing the “Tinder” app – a program that for many may be associated with  casual relationships or “hookups” – is likely a very negative association for them. However, Tinder’s dating app appears to do very different things than a CMS system, it’s not accessible via the Tinder website (you need to download the app), and maybe written using a different programming language than HTML.

How do you think this one will shake out?  Are you swiping left (no) or right (yes) on infringement?

The Controversial SAWS of “Justice”

Posted in Articles, Patents, Trademarks, USPTO

What if the Trademark Office took Taylor Swift’s controversial new trademark applications and stalled examination of them, preventing them from getting approved, despite having no legitimate basis to refuse their registration, because of the potential for public scrutiny?

Taking that a step further, what if there was an unregulated government program that in cases like Ferguson and Eric Garner essentially stalled the case, kept it from reaching a decision, and made sure that no charges were brought to avoid public backlash?

And what if that was all being done in secret with administrators denying such a program’s existence?

We’d be outraged, right?

Apparently that is exactly what has been happening to some patent applications at the US Patent Office, which is an agency within the Department of Commerce.  It has come to the attention of some patent attorneys, through examiners within the USPTO, that a program called the Sensitive Application Warning System is doing just that.  This article by Devan Rolf is a compelling look at this program from his own experience. 

Devan’s company, GoFigure, was informed by a patent examiner that he was instructed not to allow a continuation application that claims priority back to 1999, citing apparently no basis for that refusal but that the application had been identified for SAWS.  A journal article cited in Devan’s article states “the SAWS provides the PTO with a mechanism to identify potentially problematic applications and conduct additional internal review, as a means of preparing for, or perhaps even avoiding, negative publicity.”  The application  generally relates to a smartphone for downloading and streaming music and storing the title of a purchased recording into a user’s account – sound like iTunes to anyone?   GoFigure requested information relating to this decision, but their FOIA request was denied.  They spoke to the Ombudsman (a great avenue to use if you’re dealing with problems at the PTO) who  according to the article said that the pending application “reads on iTunes” and that granting the patent could result in a “very, very public case” so caution had to be exercised.  Did someone from “phone a friend” in the Commerce Department to alert them to this?

Now, there are good reasons that a patent application should be made secret (like national security reasons) and any patent applicant can request this, otherwise their application will be published and the file history related to that may be publicly available.  There’s a specific outlined process for that and the ability to make a patent secret is codified at 35 U.S.C. 181.   In SAWS however, the US Patent Office is self-selecting applications for this program, with no notice to the applicant, and no subjective, transparent regulations to explain why some applications are selected and others are not.

The GOP-lead Congress has made strong commitments to pass legislation to correct the problem of patent trolls, but it seems like SAWS, the biggest troller (that’s how kids are using “troll” these days, right?),  needs to be addressed too.

The US patent system originally was supposed to protect inventors, as ownership and the right to file for a patent application was reserved for the inventor, but following the America Invents Act, corporations have much more control over this process.  It appears that they also may have some additional influence within the Patent Office itself.

Take Down for “Chinatown”?

Posted in Advertising, Branding, Dilution, Fair Use, Famous Marks, Infringement, Sight, Trademarks

Famous brand owners, take note: a Turkish artist and designer named Mehmet Gozetlik recently released “Chinatown,” a mesmerizing series of photographs in which neon lights depict famous design marks, with the word mark replaced by its generic wording in Chinese.  Is your brand one of them?

The Pepsi logo, for example, has been recreated in a meticulously crafted neon light, with the Chinese characters for “diet cola” appearing in the spot reserved for “PEPSI.”  See for yourself in the video below:

Chinatown / The Chinese translation of the trademarks from Mehmet Gözetlik on Vimeo.

According to the artist:

‘Chinatown’ pushes viewers to ask themselves what it means to see, hear, and become fully aware. ‘Chinatown’ also demonstrates our strangeness to 1.35 billion people in the world, when you can’t read Chinese.

In other prints, “Car” replaces “FORD,” and (my favorite) “Caramel Macchiato” replaces “STARBUCKS.”

You can see the full gallery of photographs on Gozetlik’s website. In all, 20 famous design marks are featured, each with generic Chinese lettering.  Twelve of the prints are currently for sale at “Eyestorm,” a gallery with locations in London and New York.1

If you’re considering parting with $740 for a print, I suggest getting an order in now — if the brand owners fortunate enough to be featured take action, this could be a limited time offer.

Things get dicey where artistic works use trademarks, and the Lanham Act intersects with the First Amendment. The Lanham Act prohibits the use of a word, term, name, or symbol that “is likely to cause confusion, or to cause mistake, or to deceive as to the . . . origin, sponsorship, or approval of his or her goods, services, or commercial activities.” 15 U.S.C. § 1125(a)(1)(A). In other words, the central question is whether consumers would be confused as to whether Pepsi et al. sponsor or approve of Gozetlik’s artwork.

On the other hand, courts have found that the public interest in free expression can trump consumer confusion. The University of Alabama learned this three years ago, when it sued an artist who painted and sold images of Alabama Crimson Tide football games. These images, which sought fidelity to real-life events, contained the Tide’s iconic uniforms and designs. The Eleventh Circuit found in favor of the artist, and held that courts “should construe the Lanham Act narrowly when deciding whether an artistically expressive work infringes a trademark.” These so-called “artistically expressive” works do not violate the Lanham Act “unless the use of the mark has no artistic relevance to the underlying work whatsoever.”

Other brand owners choose to embrace artistic use of their marks. In response to Andy Warhol’s iconic Campbell’s Soup Cans painting, the Campbell Soup Company wrote Warhol a glowing letter in 1964 wishing him “continued success and good fortune” — and sent him some tomato soup to boot!

This presents brand owners with an interesting choice to make: pursue, or praise? No doubt, the photographs (and accompanying video, which earned a Vimeo “Staff Pick”) are gorgeous, and present a provocative message on globalization and language.  The rave reviews from other corners of the Internet suggests that we trademark lawyers are just wet blankets.

But no one can deny that the photos’ recognizability — and indeed, their entire premise — starts with appropriating famous design marks. Nowhere on Gozetlik’s website (or Eyestorm’s) is there any mention of a license to use these marks.2 The commercial nature of Gozetlik’s work is clear — and by selling to U.S. consumers through a gallery with a U.S. location, the Lanham Act directly applies.

Gozetlik’s replacement of the respective word marks with generic wording is another troubling issue: aside from the general aversion to generic wording, would English-speaking viewers believe they were looking at the Chinese transliteration for “PEPSI,” rather than the accepted translation for “diet cola”?  I must admit that, at first glance, I assumed the former.

So, what do you think? Should the brand owners featured in the collection take down “Chinatown”? Or should they back off entirely?

Perhaps most importantly, should Starbucks “pull a Campbell’s” and send some Caramel Macchiatos to the artist?

 


  1. The remaining eight prints — featuring logos for 7-ELEVEN, Lufthansa, and Chiquita — are not listed for sale, but it’s unclear whether any of these companies have taken any action.
  2. I’d be very impressed indeed if Mr. Gozetlik had actually obtained all 20 licenses!

Rihanna ‘shines bright like a diamond’ but still no right of publicity for the UK

Posted in Fashion, Goodwill, Guest Bloggers, International, Loss of Rights, Mixed Bag of Nuts

Nicola Hill, Associate and Jude King, Trainee Solicitor, Browne Jacobson LLP

This is the era of celebrity. It has become a global commercial enterprise in its own right. From launching personalised perfume ranges to being the face of fashion houses, there can be no doubt that celebs are a high value commodity. As such, every star wants to protect their image or name. Yet whilst many states in the US recognise a ‘right of publicity’ – the right to control the commercialisation of their own image – such a right has never existed under English law. As Colin Birss J succinctly put it at first instance in this case:

“Whatever may be the position elsewhere in the world, and however much various celebrities may wish there were, there is today in England no such thing as a free standing general right by a famous person (or anyone else) to control the reproduction of their image.”

This position was confirmed recently by the Court of Appeal (CA) in Fenty v Arcadia, who upheld Rihanna’s $5 million claim in passing off against the British fashion retailer, Topshop, but denied the existence of an image right under English law. It came as a mixed blessing to many in the celebrity field, who had pinned hopes on Rihanna’s case being an opportunity to finally introduce image rights into the UK.

The case involved a well-known UK fashion retailer Top Shop – a store synonymous with London cool. Topshop began selling a t-shirt featuring an image of RiRi herself both online and in their stores. Despite having a licence from the photographer allowing them to use the image, Topshop did not have Rihanna’s permission, who then complained to Top Shop that the sale of the t-shirt without her permission infringed her rights. Topshop’s response, one could say, was that she should just ‘shut up and drive’.

Rihanna subsequently brought proceedings against the fashion giant alleging passing off (N.B. this is a long-established English common law tort requiring the Claimant to prove goodwill, misrepresentation and damage).

At first instance, Birss J clarified that English law does not treat merchandising and endorsement differently; what is required for both is that a substantial portion of those considering the product will be induced to think it is authorised by the artist, and that they are in some way responsible for their quality/appearance. He considered the evidence at hand and found that Rihanna met all three criteria. Rihanna was thus successful and granted protection under the, ahem, ‘umbrella’ of the English legal system.

On 22 January 2015, the CA delivered its judgment. It upheld the first instance decision, concurring that Rihanna had the requisite goodwill in the goods in question, both as a style icon in her own right and having her own fashion line and collaborations with companies such as Gucci and one of Topshop’s biggest rivals, River Island. The CA further found misrepresentation on the facts because Rihanna had previous associations with Topshop and also the image appeared to be a publicity shot for her then current album ‘Talk That Talk’ so the relevant public were likely to be deceived into thinking that the product was authorised by Rihanna. Damage was proven through the loss of merchandising business in addition to loss of control over her reputation. It was held that Birss J was correct in upholding passing off, but to the disappointment of many, there was no likelihood of the CA introducing an image right any time soon.

Further, the CA was at pains to reiterate that this case turned squarely on its facts and that the sale of clothing bearing recognisable images of celebrities does not, in itself, amount to passing off. This case is clearly not designed to open the floodgates for false endorsement claims.

So what does it mean going forward? Firstly, there is clearly no intention to introduce a US-style image right into the UK. Neither is it intended that passing off becomes a back-door personality right. What Fenty does do, however, is to send a clear message to English retailers and designers to exercise caution in using celebrity imagery. It also gives our superstar clients a glimmer of hope that, in the right circumstances at least, they might be able to take back some control over use of their image in England. So for that… Take a Bow, Rihanna.

Red Bull Strikes Again, but Is Old Ox Brewery a Matador in Disguise?

Posted in Articles, Branding, Famous Marks, Food, Infringement, Trademark Bullying, Trademarks

It’s no secret that Red Bull has a strong trademark enforcement strategy. Too strong, according to some. In its defense, IP counsel for Red Bull has stated that

With a brand as famous as Red Bull you can certainly imagine the type of coat-tailing that goes on by third parties and we invest a lot of time and money to stop such infringements as the brand is that important to the company.

I agree with the sentiment behind the statement. But sometimes the sentiment gets lost in translation. In 2014, Red Bull pursued legal action against a U.K. brewery that began selling beer under the brand Redwell. After a strong public reaction, the company clarified that:

Red Bull has all along been willing to allow Redwell to maintain its mark for beer so long as they do not use it for energy drinks.

Fair point, but I can’t help but wonder, was there ever any indication that Redwell might sell energy drinks? Do consumers expect producers of beer to also produce energy drinks (or vice versa)?

Fast forward and Red Bull finds itself in a similar situation. On Jan. 28, 2015 the company filed a Notice of Opposition to Old Ox Brewery’s application to register its OLD OX BREWERY mark in connection with beer, ale, lager, stout and porter. Red Bull claims that the OLD OX BREWERY mark is likely to create confusion with its RED BULL mark.

As a general rule, the two main factors in the analysis involves (1) the similarity of the overall commercial impression of the marks; and (2) the relatedness of the goods. Setting aside the issue of whether energy drinks are related to beer (which deserves an article all on its own), my initial reaction is that OLD OX BREWERY is simply too dissimilar to create a likelihood of confusion. Whether marks create an overall similar commercial impression depends on similarities between sight, sound, and meaning of the mark.

Other than the number of syllables, OLD OX doesn’t sound or look anything like RED BULL. Accordingly, Red Bull is relying heavily on the “meaning” of the marks. And that’s where things get interesting.

It certainly wouldn’t be the first time where the meaning of the marks trumped differences in sight and sound. Yet when this occurs, the goods are usually identical. For example, CYCLONE and TORNADO found confusingly similar in connection with wire fencing or PLEDGE and PROMISE found confusingly similar in connection with furniture wax.

So what is Red Bull’s argument for similarity in meaning? Paragraph 9 of the Notice of Opposition alleges that:

An “ox” and a “bull” both fall within the same class of “bovine” animals and are virtually indistinguishable to most consumers. In addition, an ox is a castrated bull.

Apparently Red Bull has little faith in the ability of consumers to distinguish between various classes of bovine animals. That would include cows, bulls, oxen, yaks, bison, buffalo, steer, longhorns, and apparently antelopes (Wikipedia threw me a curveball there).

But Red Bull’s claim does not rest solely on the bovine nature of oxen and bulls, but also the fact that an ox is a castrated bull. The implied claim being that the image of a castrated bull creates the same commercial impression as the RED BULL mark. If that’s the case, I’d suggest sending those legal fees to the marketing department to fix that issue. I knew that Red Bull gave you wings, but I guess I never asked what they took in return.

In my mind, the shared similarity in meaning of a bovine animal does not overcome the stark differences in sight and sound between the marks.  In particular an old ox, having suffered through a particular medical procedure, doesn’t scream “energy drink,” but instead, the polar opposite of the commercial impression that Red Bull tries to create. But maybe I’m missing something, kind of like an old ox.

12th Man Down

Posted in Branding, Infringement, Law Suits, Marketing, Trademark Bullying, Trademarks, USPTO

In the wake of our 49th Super Bowl (er, “The Big Game”), it seems the Seahawks are not only making headlines with their last minute calls, but also with their IP strategies.

http://cyberbargins.net/seattleseahawks.gif

Over the past couple of years, the Seahawks have filed for registration of several marks, including at least a dozen applications filed in 2014.  Some of the applications drawing attention lately include the Seahawks’ attempts to register the phrase GO HAWKS and the word BOOM, both in standard script form, for various goods and services.  Additional applications filed in 2014 include phrases such as WE ARE 12, THE 12s, and LEGION OF BOOM.

So far, the team’s attempts to register GO HAWKS brought challenges from the NHL (for the Chicago Blackhawks) and NBA (for the Atlanta Hawks).  The application is also drawing attention from the University of Iowa (the Hawkeyes).  But arguably, the broadest application recently filed by the Seahawks is for the number “12” for use on capes, jerseys, sweatshirts, and long-sleeved and short-sleeved shirts and t-shirts.

Seattle Seahawks’ 12th Man Flag

For anyone who, like myself, is an infrequent football fan at best, the number 12 signifies the fans.  That is, each team usually has eleven players on the field at a time.  “The 12th Man” recognizes fans’ role in supporting the team to victory.  But then, doesn’t every American football team have a 12th Man in the overzealous crowds of painted faces and nacho cheese?  Texas A&M doesn’t think so.

The University has held a registration for 12TH MAN since the 1990s.  In 2006, Texas A&M sued the Seahawks for using “12th Man” to describe Seahawks fans.  The suit ended in a license agreement, in which the Seahawks agreed to pay an annual licensing fee of $5,000 to use the phrase in limited circumstances. Under the license, the Seahawks are permitted to raise a flag at the start of each game and call it the “12th Man Flag.”  The flag can have the number 12 on it, but not the word “man.”  The ‘Hawks also can’t sell any merchandise featuring the phrase.

Batch No. 12 Bourbon

The Seahawks do hold a registered trademark for their blue and white 12th Man Flag, and are  apparently now working to further protect their use of the phrase in relation to their own team.  In addition to filing their own recent applications, the Seahawks have also formally challenged pending applications for 12 NATION, filed by former Seahawks kicker Norm Johnson and his son Jordan Johnson, and BATCH NO. 12, filed by a small Washington distillery in relation to a line of spirits.  Norm and Jordan Johnson abandoned their application after the Seahawks’ challenge, stating that they didn’t have the funds to pursue the fight.  The Washington distillery has different color combinations for its Batch No. 12 labels, one of which is an admittedly familiar blue and green.

The team even challenged an application for DISTRICT 12, filed by Lions Gate Films in connection with the Hunger Games franchise, but, perhaps due to public backlash, has since withdrawn and allowed the application to move forward.

The Seahawks also recently filed an application for the number “12” in a  stylized font similar to what appears on their jerseys.  New England Patriots quarterback Tom Brady may have something to say about that one.

Tom Brady: New England Patriots #12

While the Seahawks’ IP strategy may be somewhat aggressive, a large trademark portfolio is not unique to the team, nor is trademarking everyday terms and phrases.  For a couple of examples, the Raiders own JUST WIN BABY, and the Patriots own DO YOUR JOB.  Trademarks for standard form numbers for various goods and services are also not new.  (How about “31” in connection with retail ice cream services, or “5” for a certain Chanel perfume?)

Based on a USPTO online search, the Seahawks currently hold 51 active trademark registrations (including granted and filed applications).  Teams use their marks not only for licensing and merchandising profit, but also to instill the team’s brand in the minds of fans.  Perhaps one reason the Seahawks brand is so well recognized is due to their increased efforts to leverage their IP.  However, the team’s latest round of applications may be stretching the brand’s reach a bit too far.  Maybe it’s time the Seahawks take a page from the Patriots’ playbook, and deflate their strategy.