By Matthew V. Bruno
The New York Jets recently scored a touchdown off the field when a Louisiana Federal Court ruled that a sports marketing company no longer owned the trademark to the phrase “Ultimate Fan” in Action Ink Inc. v. New York Jets LLC, et al. On May 30th, 2013 United States District Judge Jane Triche Milazzo of the Eastern District of Louisiana granted the professional football team’s motion for summary judgment against Action Ink Inc. holding that the trademark was abandoned and Action Ink had no enforceable trademark rights to the phrase.
Action Ink sued the Jets and its game developer, Arkadium Inc., in 2012 claiming that it had maintained the registration for the catchphrase since the 1980s. In its pleadings, Action Ink noted that the Jets’ use of the phrase gave “the wrong impression that Action Ink is an infringer taking a free ride” on the Jets’ use of the mark. Action Ink further cited that the Jets’ 2010 Facebook App resembled an electronic version of Action Ink’s own ‘Ultimate Fan’ contest by allowing users to compete on behalf of their sports teams, host tailgate parties, and rate players online while games were played in real time.
Action Ink claimed that the Jets’ use of the trademark in the 2010 App, and on applications on other social networking sites, violated Louisiana’s unfair competition law and created “a likelihood of confusion” and “reverse confusion” under the Lanham Act, 15 U.S.C.A., §1127. According to Action Ink, the Jets used the trademark not simply to describe the App, but rather in connection with the same services registered by Action Ink’s federal registration. Action Ink stressed that as the small local user, the Jets’ use of the trademark overwhelmed the value of Action Ink’s use of the mark by saturating the market with Ultimate Fan advertising.
In making claim for long its long and continued use of the saying, Action Ink noted three decades of the trademark’s use in connection with promotions including Tulane University and Major League Baseball resulting in “significant” local goodwill and recognition. Action Ink stressed that it began using the slogan “The Ultimate Fan” in a 1983 NBA basketball promotion and had continuously maintained the registration for the mark with the United States Patent and Trademark Office since 1985.
In its March 2013 motion for summary judgment, filed under seal, the Jets admitted that Action Ink owed the mark but stressed that it had failed to make bona fide use of it in commerce on any goods or services for three consecutive years and was subject to cancellation for abandonment, or alternatively, fraud on the Patent Office when it renewed its application for the trademark in 2005, citing continued commercial use.
Action Ink countered by arguing that it had continuously defended the trademark when it issued cease and desist letters to various sports teams who tried to use the trademark at both the collegiate and professional level. In response to the Jets’ claim that it had not made continued economic use of the mark for three consecutive years, the marketing company proffered affidavits from an athletic director and Action Ink employees attesting to various future business opportunities, including a potential deal with Louisiana State University.
Matthew is an attorney in the Garden City office of Goldberg Segalla LLP where he concentrates in business and commercial litigation matters. He is also a member of Goldberg Segalla’s Sports and Entertainment Practice Group and a frequent contributor to the Sports and Entertainment Law Insider. He can be reached at 516-281-9880 or mbruno@goldbergsegalla.com.
