On Thursday, November 12, 2015, Texas A&M University filed suit against the NFL’s Indianapolis Colts[1] alleging infringement and dilution of its various “12th Man” trademark rights.  If this sounds familiar or redundant, remember that A&M previously sued the NFL’s Seattle Seahawks for unauthorized use of the same trademarks nearly a decade ago.  A&M eventually settled that matter with the Seahawks, with the NFL franchise agreeing to pay a license fee to A&M.  The actual terms of that license and settlement were never made public and Seattle continues to use variants of the “12th Man” name today.

As part of the settlement, Seattle also had to publicly acknowledge that Texas A&M owns the rights to “12th Man” trademarks and that the university also holds the exclusive right to use that term for marketing and product sales, with Seattle’s uses now being allowed per a license.  Apparently Indianapolis does not have access to the internet just yet and was unaware of this prior trademark dispute and ownership squabble.  For the Colts are alleged to have been using the “12th Man” mark inside of its new stadium since approximately 2006.

After filing suit, A&M issued the following statement:

“We bear no ill will toward the Indianapolis Colts,” said Texas A&M University System Chancellor John Sharp. “We simply want them to respect our trademark rights. Our actions are consistent with our previous trademark enforcement efforts in this regard.”

Apparently, around the time A&M settled with the Seahawks, in November 2006, the university contacted the Indianapolis Colts about their unauthorized uses by sending a cease-and-desist letter to demonstrate how serious they are about their trademarks.  Nearly two years later, the school followed up with a proposed agreement that would allow the Colts to acquire a license to the marks.  More cease-and-desist demand letters were sent in 2012.  The Colts essentially treated these demands about the same way they treat the opposing defense showing a new look: they ignored it.

Not only did the Colts ignore the demand letters, they flaunted the use of A&M’s purported trademark rights, and before the 2015 season sent out ads to “Join the 12th Man” to fans and potential ticket buyers.   At this point, the Aggies could no longer sit idly by and get run over.  They sent in the [trademark] blitz.

coltsad

A&M also accuses the Colts of selling “12th Man” products on the Colts Pro Shop website.  Based on the Seahawks precedent and the fact that Texas A&M does in fact own registrations to not just one but at least three registrations for “12th Man” trademarks and service marks, it would be hard for the Colts to deny the confusing nature of these uses as it is exactly the same mark.[2] Ignoring for the moment that the concept of a “12th Man” is trite and cliché, what potential grounds do the Colts have for challenging A&M’s rights to this mark?

Through the allegations in the lawsuit, A&M claims to have used the “12th Man” marks in connections with sporting events and other goods and services since at least 1922.  This mark has become part of the A&M culture and tradition with having a member of the student body be on the kickoff team for the actual football team.  This, in turn, has provided A&M substantial goodwill and notoriety associated with the mark.  A&M claims that the Colts are diluting the value of this mark through their unauthorized uses.  Based on the dysfunctional nature of the Colts organization this year, I would be inclined to agree with that statement on its face.

If the claims that the Colts did not start using the “12th Man” mark until 2006 are accurate, it is unlikely that the Colts could claim that they have priority in use.  Nor can the Colts contend that they are marketing their products to a different customer base – both uses are directed towards fans of American football teams and for similar goods and services.  A&M’s mark is also likely to be deemed “famous” given in part to the widespread publicity of the lawsuit with the Seahawks and also the ubiquitous nature of the mark anytime a Texas A&M football team is playing on national television.

Maybe this is why the Colts ignored the cease-and-desist letters?  It appears they did not and do not have much of a defense.  I am sure Peyton Manning would attest to the Colts’ routine inability to put a competent defense on the field, too.  At least the Colts are consistent.

What I do find interesting is that Texas A&M claims uses of these trademarks dating back to 1922.  1922!!!  Yet A&M did not seek to acquire a federal registration for these marks until 1990.  How did it take nearly 70 years for someone in the administration to suggest they should maybe, possibly think about protecting their valuable trademark rights through a federal registration?  As a trademark lawyer, I find that unfathomable.  A&M does have in-house counsel, right?  And presumably they have access to sophisticated and forward-thinking IP counsel?  Yet, no federal trademark registrations for decades.  Of course, A&M could always correctly state they held common law rights in the name, but this is not nearly as strong as being able to present a federal registration to a judge and jury when claiming harm and monetary damages from unauthorized uses.  I just find that tidbit interesting.

Under Armour, Inc. has a famous PROTECT THIS HOUSE® trademark.[3]  Based on the above and my personal experience, my professional slogan should be “PROTECT YOUR TRADEMARKS”!

Disclaimer: I have previously worked with one of the attorneys filing this suit on behalf of A&M, Mr. William Raman.  He was retained as a testifying expert witness for our side in a trademark dispute back in 2007-08.  I am not involved in this current trademark case nor have I spoken to Mr. Raman about this matter at all.

 

[1] Technically, the lawsuit is styled Texas A&M University v. Indianapolis Colts, Inc., No. 4:15-cv-3331, in the United States District Court for the Southern District of Texas

[2] Trademark Reg. Nos. 1,612,053 (1990); 1,948,306 (1996); and 3,354,769 (2007). A&M also owns a registration for “Home of the 12th Man,” Reg. No. 4,301,538 (2013).

[3] Trademark Reg. Nos. 3,402,229 (2003) and 3,426,653 (2007).