Texas A&M University has filed a lawsuit against the Indianapolis Colts in federal court in the Southern District of Texas, seeking to protect its 12th Man trademark rights.
The use of 12th Man originated in 1922 when Texas A&M student, E. King Gill, was asked to come down out of the stands and suit up for a game against Centre College. Gill stood on the sidelines for the rest of the game, ready to play if needed. Texas A&M won the game, and the 12TH Man phrase was adopted “to identify and distinguish the Texas A&M spirit evidenced by E. King Gill at that game,” according to the university. The school officially established the trademark to the phrase in 1990.
Since then, the university has aggressively defended its trademark. Several years ago, it sued the Seattle Seahawks when that team began describing its fan base with the phrase. In response, the Seahawks negotiated a licensing deal with the university, which called for a one-time payment of $100,000 to the university, plus annual payments of $5,000. That deal expires next year.
Furthermore, Seattle is only allowed to use the phrase on promotional material in certain states (Alaska, Hawaii, Idaho, Montana, Oregon, Utah and Washington) and cannot sell merchandise using the phrase.
The Buffalo Bills also negotiated a license from Texas A&M for “12th Man,” but that deal is only for limited use inside the stadium, and is reportedly set to expire next year.
As for the Colts, the university claims that the team first began using the “12th Man” mark inside its stadium in 2006. Texas A&M sent a cease-and-desist letter, and the Colts reportedly agreed not to use the mark on any goods or services. The team, however, “retired the 12th Man mark” in its ring of honor in 2008, according to the law suit, spawning another warning from Texas A&M. The final straw, claimed the university, was when the Colts used the phrase in a marketing e-mail earlier this year, encouraging its fans to “Join The 12th Man.”
Texas A&M is asking the court to ban the team from using the mark, in lieu of any monetary damages.
“We would prefer not to file lawsuits to protect our trademarks,” said school president Michael K. Young in a statement. “However, when our intellectual property, especially the 12th Man mark which is so important to our students and former students, is used without our permission after repeated attempts to engage on the matter, we are left with no choice.” A&M System Chancellor John Sharp added that “we simply want them to respect our trademark rights. Our actions are consistent with our previous trademark enforcement efforts in this regard.”
The lawsuit can be found here: http://media.graytvinc.com/documents/TAMU+vs.+Colts+Inc+Lawsuit.pdf
Trademark Defined
A trademark is defined as any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the good of one manufacturer or seller from those of another and to indicate the source of the goods (15 U.S.C. § 1127). In order for a trademark to be granted, the mark must be used in commerce and must be distinctive, meaning that any mark must be unique for the trademark applicant. United States trademark law is primarily governed by the Lanham Act (15 U.S.C. § 1051, et seq.). Once a trademark is registered by the USPTO, the holder may file a claim against any infringement or unauthorized use of the mark within the United States. The Lanham Act uses a three pronged test to determine whether trademark infringement has occurred, asking whether 1) the conduct of the defendant has had a substantive effect on United States commerce, 2) the defendant is a U.S. citizen, and 3) whether there is any conflict with foreign law[1]. In order for a trademark to be registered, an application must be filed with the USPTO explaining the mark, why it deserves protection, and the context in which exclusivity should be granted. This is reviewed by the USPTO and, if accepted, is published in the Trademark Office Gazette. From this point, any party who claims that the registration of the trademark would be damaging to them can file a motion against the application which is then taken to the Trademark Trial and Appeal Board (TTAB) where arguments can be made by both the applicant and the dissenting party. Trademark applications which survive the TTAB process, or are unopposed by another entity for 30 days, are officially registered by the USPTO and the owners of that registered mark have exclusive ownership of their mark. In order to maintain trademark status, the owners must be consistently using the mark and vigilant in defending their right to exclusivity.
