By Jodi Balsam
Sports trademark owners have been on the offensive the last few years, and universities have led the charge. The latest skirmish features the Big Ten Conference seeking an injunction and damages against an online marketing advice and self-help business called B10xB. (The Big Ten Conference v. Cesar L. Rodriguez, 17-cv-00045) Filed on Feb. 28, 2017 in the Eastern District of North Carolina, the Big Ten’s complaint alleges trademark infringement, trademark dilution, deceptive business practices, and unfair competition arising out of the confusing similarity between B10xB’s logo and the Big Ten name and logos.
The Big Ten Conference, which this year is celebrating its 100th anniversary, currently comprises 14 Division I universities, including football powerhouses Michigan and Ohio State, and men’s basketball perennials Indiana and Michigan State. According to the Big Ten’s complaint, the defendant is a North Carolina corporation that started using the name B10xB in 2011 to identify a website dedicated to promoting sales of B10xB instructional seminars and videos and athletic apparel, and attempted to register the B10xB trademark in 2016.
The defendant allegedly displays the B10xB logo on all its merchandise and uses the B10xB name as the identifier for various social media accounts on YouTube, Facebook, Twitter, and Instagram, where it advertises that merchandise and its instructional services. On those platforms, the company has announced plans to extend its branding to additional clothing lines. At the heart of the Big Ten’s complaint is the allegedly confusing similarity between the B10xB name and logo and the Big Ten’s logo that spells out B 1 G to appear like B10.
Based on photos embedded in the complaint, B10xB stands for “Be Ten Times Bolder.” And B10xB’s principal, Cesar Rodriguez, apparently takes his own advice because he boldly strung along Conference counsel for almost a year as they attempted to amicably resolve the matter. The Conference sent its first cease and desist letter shortly after learning of the defendant’s application to register the B10xB trademark. During the next 10 months, the Conference sent four more letters, each time eliciting little more than obfuscation. On one occasion, Mr. Rodriguez refused to open an electronic version of a cease-and-desist letter because of purported concern that it was “a spam message with virus.” On another occasion, he claimed to be deferring the matter to an attorney who never materialized. For the most part, he just ignored Conference counsel’s repeated attempts to reach him by email and letter.
Meanwhile, B10xB continued to pursue its stated mission to “help you transform you into the ten times bolder version of yourself.” Featuring inspirational photos and videos, B10xB’s social media feeds have generated hundreds of thousands of YouTube views, more than 17,000 Instagram followers, and 1,300 Facebook likes. The Big Ten claims that in generating this attention, and the resulting revenue, B10xB has traded on the goodwill associated with Big Ten marks.
The Big Ten has aggressively protected its marks and logos, including seven registered trademarks that cover sports associations, apparel, publications, and educational services. Its complaint against B10xB offers two principal legal theories:
First, the Big Ten advances a classic trademark infringement claim, alleging that the B10xB name and logo are likely to cause consumer confusion over the origin of its goods and services. However, for the Conference to succeed in establishing this claim, it must prove that a significant likelihood of confusion exists between its marks and the defendant’s. The well-known Polaroid factors for determining likelihood of confusion are equivocal here, especially given B10xB’s inclusion of the “Be Ten Times Bolder” slogan in almost every use of its allegedly similar logo. That practice makes confusion less likely; significantly, the complaint does not identify any evidence of actual confusion. While not a pleading requirement, an actual consumer’s confusion is powerful evidence of infringement.
Second, the Big Ten alleges trademark dilution, the redoubt for senior mark holders concerned that any encroachment on their marks will diminish their brand value and ability to protect those marks in the future. Dilution is an easier case to make than infringement because the senior mark user merely needs to show “blurring,” that is, weakening of the connection in consumers’ minds between its mark and its goods and services. Thus, the Big Ten need not prove a likelihood of confusion, or even the existence of competition between its goods and those of B10xB. By this theory, arguably the Conference can shut down any mark that incorporates the letter “B” and the number “10.”
In addition, the complaint lodges state law claims of deceptive trade practices and unfair competition, both of which require establishing that defendant’s use of the marks have a “tendency to deceive consumers” as to the source of the goods or existence of any affiliation with the Big Ten. The complaint also suggests that the Big Ten will seek to leverage its pre-complaint parleys with B10xB. Defendant’s evasion of the Big Ten’s numerous attempts at early resolution of the matter might be used to establish willful infringement and intent to deceive, which can justify enhanced damages and attorneys fee awards.
The complaint may strike some as yet another occasion of trademark bullying, part of a now decades-long campaign by universities and colleges to safeguard and strategically manage their sports trademarks. Observers of this licensing category are familiar with the flood of challenges in the last 10 years made by universities against high schools for use of similar sports team nicknames, logos, mascots, colors, and other insignia. Now it appears that tactic is migrating into other ostensibly non-competing businesses.
Sports trademark licensing is a lucrative business for higher education. Estimates of global retail sales of licensed merchandise in the sports category topped $26 billion in 2014. But this category’s very success has resulted in a tougher fight for retail dollars as more universities attempt to monetize their intellectual property. At the same time, the Internet and social media have brought increased visibility to the marks and logos of once obscure businesses that never anticipated competition or conflict with sports powerhouses. In establishing a foothold in the digital world, small businesses may also try to expand their brand awareness through logoed apparel and merchandise, even if such merchandise is not the business’s main purpose. Thus, the digital world collides with traditional trademark, and senior mark users feel compelled to take action to protect their brands. Under Armour is a famous example, sending cease- and-desist letters to every company that uses any spelling of the word “armor” in its name. Interestingly, the Big Ten has been on the receiving end of this very tactic, as earlier this year the NCAA sought to protect its rights in “March Madness” by filing an opposition to the Big Ten’s attempt to register “March Is On!” That proceeding is still pending.
The Big Ten’s lawsuit against B10xB is in its very early stages. But given the flexibility and reach of the trademark dilution doctrine and the risk-reward downside of potentially high-cost litigation, small companies like B10xB have little recourse but to acquiesce to the demands of well-resourced defendants like the Big Ten.
Jodi S. Balsam is Associate Professor of Clinical Law and Director of Externship Programs. In her role as Director, she is responsible for designing the curriculum to support Brooklyn Law School students enrolled in externships in civil practice, criminal practice, and judicial settings. She teaches externship seminars and oversees faculty and field supervisors in the externship program. Professor Balsam also teaches Sports Law both at Brooklyn Law School and at NYU School of Law.