By Josh H. Escovedo, of Weintraub Tobin
A dispute has emerged between the NFL, the Las Vegas Raiders, and the Dimopoulos Law Firm over the NFL and the Raiders threatening to sue the firm for trademark infringement. The law firm claims it has been using a black and silver color scheme to promote its services since its inception in 2012. However, after hiring three professional athletes, including Maxx Crosby of the Las Vegas Raiders, to appear in a new advertisement, the NFL sent a cease-and-desist letter to Dimopoulos accusing the firm of unauthorized use of the Raiders’ marks. The complaint states that the advertisement did not feature any logos or trademarks of the NFL, the Raiders, or any other sports teams, and the disclaimer on the Dimopoulos Law Firm website and YouTube page make it clear that the firm is not affiliated with the NFL. Below we analyze the grounds of the dispute and the legal implications of the case.
The Dimopoulos Law Firm alleges that the NFL’s cease-and-desist letter is unfounded. According to the letter, the NFL claims that Dimopoulos used hashtags, including the Raiders’ marks, and engaged in other unauthorized use of their marks. However, the complaint alleges that the advertisement did not feature any NFL logos or names, and the disclaimer on the Dimopoulos Law Firm website and YouTube page clearly states that the firm is not affiliated with the NFL. The limited information available suggests that it is unlikely that a reasonable consumer could be confused into thinking that the firm is affiliated with the NFL or the Raiders.
The Dimopoulos Law Firm argues that multiple professional sports teams, including the Los Angeles Kings, the San Antonio Spurs, and the Chicago White Sox, use a silver and black color scheme. However, the NFL could have protectable IP in its color scheme, but that remains to be seen.
As for the hashtag claim and the argument that using the marks as hashtags creates a false designation of association or affiliation with the Raiders or the NFL, that seems plausible. If a consumer were to see the silver and black uniforms in the advertisement that was returned in response to a search for #raiders or #raidernation, they could potentially assume that there must be a relationship between the firm and the NFL or the team. However, the disclaimer on the firm’s website and YouTube page makes it more complicated.
In conclusion, the dispute between the NFL and the Dimopoulos Law Firm over trademark infringement is complex and will require further examination of the facts. While the Dimopoulos Law Firm may have used a silver and black color scheme, it is unclear if the NFL has protectable IP in its color scheme, and even if it does, whether that would preclude use by a personal injury law firm. The hashtag claim is also complicated, given the disclaimer on the Dimopoulos Law Firm’s website and YouTube page. Ultimately, the case will come down to whether the NFL and the Raiders have protectable IP in the color scheme and other marks and whether the use is likely to create consumer confusion or create a false designation of association. We will have to see how it plays out.
