When is a phrase too general to be an enforceable trademark?
That will be a key question in the sports law industry that should get resolved in the coming weeks or months after Texas A&M challenged the NFL’s Seattle Seahawks over the team’s use of the phrase “the 12th Man” days before the Seahawks were scheduled to play in the Super Bowl.
A&M, a school that tightly embraces its traditions, claims that its use of the phrase began in the early 1920s in reference to a student, who volunteered his services when the team was low on players. In 1990, the school trademarked the phrase.
The specific legal battle with the Seahawks, according to A&M, began in the fall of 2004 when A&M officials notified the Seahawks organization that they were violating its trademark by referencing the “the 12th Man” on its web site and in the team’s magazine. Dissatisfied with the response, the school sent a cease and desist letter to the organization in December 2004.
Acknowledgement of the legal issue continued into 2005, when Seattle reportedly offered to pay A&M a $10,000 licensing fee for a “specific, narrow and limited use of the phrase” for 10 years. That same offere was made as late as November 2005, according to court documents.
The battle continued, and Seattle again offered $10,000 as recently as November.
A&M then sought, and was granted, a temporary restraining order by a local state judge. The Seahawks successfully had the case moved to federal court where it resides today.
The Seahawks’ Lance Lopes, vice president in charge of corporate partnerships and legal affairs, questioned the validity of A&M’s claim.
“Based upon a number of factors, Football Northwest LLC (the owner of the Seahawks) believes it has a valid legal basis to defend its use of the 12th Man in conjunction with its activities here in Seattle,” Lopes wrote in court documents. “In brief, FNW believes Texas A&M would have a difficult and expensive task of proving the essential element of confusion based upon our activities. In addition, there is the risk that the trademarked phrase could be deemed too descriptive and general in nature as to be enforceable.
“The 12th Man is often used in common parlance when referring to the fans of teams. Pursuing these defenses however, will be expensive and involve risk for both parties,” he added.
Bill Youngkin, a Bryan (Tex.) attorney, who is part of the legal team representing the school, countered, telling the Bryan College Eagle that “A&M has had this by common law ever since the 12th Man came out of the stands. So even without formalizing a trademark, by common law they would have some rights.”
He said the school sought court intervention when “it became evident what they were doing in utilizing the trademarks that A&M has. A&M sent them a cease and desist request letter. And they’ve not complied with it. A&M has had to do this in the past with other organizations.”
The school has pointed to similar situations, such as the Chicago Bears and Buffalo Bills, which all acquiesced.
“In all instances, they complied to cease and desist letters,” Youngkin said. “Seattle is the only one that has been dilatory.”
Steven B. Moore, chief marketing officer and vice president for communications at Texas A&M University, said in a statement that none of A&M’s trademarks “is more crucial than that of the 12th Man because of all it means to Aggies, those currently enrolled and to more than 275,000 former students.
“We are not driven in this matter by concerns about any lost revenue in the licensing process. It is simply a matter of principle-ensuring that nothing infringes on the 12th Man concept and its Texas A&M uniqueness.”
In addition, Moore has told the media that the school will remain vigilant. “We have a lot tied up in the 12th Man,” he said. “We’re like a company protecting a brand.”
