A federal judge in the Southern District of New York has granted summary judgment to the Cleveland Browns and NFL Properties, Inc. (NFLP) in a trademark case, finding that team and the league retained “senior user” status to use the “Dawg Pound,” even though the team had been shut down from 1995 to 1999.
Central to the court’s ruling was the fact that the Browns and NFLP “enforced what they perceived to be their rights in the ‘Dawg Pound’ mark during the period.”
The court began by chronicling the use of the phrase “Dawg Pound” in the early 1980s to describe “the particularly enthusiastic fans of the Cleveland Browns football team who sat in the bleachers of the old Municipal Stadium (where the Browns played until 1995), and who now sit in the new Cleveland Browns Stadium.”
Shortly thereafter, the plaintiff in the case, Hawaii-Pacific Apparel Group, Inc. (HP), began using the phrase on its line of non-football-related apparel. When HP attempted to register the mark with the United States Patent and Trademark Office (PTO), the application was opposed by the NFLP, and the mark was never registered. HP was, however, successful in registering the marks “Top Dawg” and “Lil Dawg Pound” in 1995 and 1996, respectively (in unopposed applications), and eventually succeeded in selling millions of dollars of its merchandise.
The dispute intensified in 1999 when the NFL re-introduced the Browns franchise back to Cleveland after a four-year absence. The NFLP filed an intent-to-use application for the Dawg Pound mark with the PTO, which was rejected because of its similarity to HP’s Lil Dawg Pound mark. A lawsuit followed, leading to cross-motions for summary judgment.
In its analysis, the court noted that “it is a fundamental principal of trademark law that the right to exclusive use of a trademark derives from its appropriation and subsequent use in the marketplace. The user who first appropriates the mark obtains an enforceable right to exclude others from using it, as long as the initial appropriation and use are accompanied by an intention to continue exploiting the mark commercially. H.W. Carter & Sons, Inc. v. William Carter Co., 913 F. Supp. 796, 802 (S.D.N.Y. 1996) (quoting La Societe Anonyme des Parfums Le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1271 (2d Cir. 1974)).”
Further, the court agreed with the NFLP and the Browns were the “senior users” of the mark.
“The indisputable facts show that, prior to using the Dawg Pound mark on approved merchandise, licensees had to sign lengthy licensing agreements that required, among other things, the licensees to submit samples of their products to NFLP for approval prior to placing them in the stream of commerce. Moreover, the record further reflects that various licensees did indeed adhere to the approval process.”
It added that “because the Browns and NFLP licensed goods that contained the words ‘Dawg Pound’ together with some general reference to the Browns or the NFL years before HP ever used the Dawg Pound mark in commerce, no reasonable jury could find that HP was the senior user.”
Did NFLP Abandon Mark When Browns Were Dormant?
The court also resolved HP’s contention that the Browns and NFLP “abandoned whatever rights they had in the Dawg Pound mark because (1) their use of the mark was only sporadic at best between 1995 and 1999 (the period in which there was no Browns team in Cleveland), and (2) they failed to oppose HP’s registration of its Lil Dawg Pound mark in 1996.
“A finding of abandonment requires evidence that use of the mark ‘has been discontinued with intent not to resume such use,’ 15 U.S.C. § 1127, and it would defeat an alleged owner’s claim of priority. See Emmpresa Cubana Del Tabaco v. Culbro Corp., 213 F. Supp. 2d 247, 267-68 (S.D.N.Y. 2002) (“Once abandoned, the mark reverts back to the public domain whereupon it may be appropriated by anyone who adopts the mark for his or her own use. Hence a party that is found to have abandoned its mark is deprived of any claim to priority in the mark before the date of abandonment.”) (citation omitted). Because abandonment constitutes forfeiture of a property right, it must be proven by clear and convincing evidence. Id. (citation omitted).
“Here, no reasonable jury could find, by clear and convincing evidence, that the Browns and/or NFLP abandoned the mark,” wrote the court. “Indeed, the record reflects that the Browns and NFLP enforced what they perceived to be their rights in the DAWG POUND mark during the period between 1995 and 1999. (See HP Exs. D-1 & D-2 (letters from assistant counsel for NFLP to alleged trademark infringer)). Accordingly, this is not a basis upon which to deny summary judgment to the Browns and NFLP.” Hawaii-Pacific Apparel Group, Inc. v. Cleveland Browns Football Company LLC and National Football League Properties, Inc., S.D.N.Y.; 04 Civ. 7863 (DC); 2/23/06
Attorneys of Record: (for plaintiff) Christine Karol Roberts, Esq., Floral Park, CA, (for defendants Robert L. Raskopf, Esq., Jennifer J. Millones, Esq., Jessica A. Rose, Esq. of White & Case LLP, By:, New York, NY.
Full Opinion: 2006 U.S. Dist. LEXIS 7403