22 November, 2015
In yet another incident of unauthorized use of trademark, Texas A&M University (hereinafter, the University) has filed a suit against Indianapolis Colts, Inc. (hereinafter, ICI) for trademark infringement, unfair competition, trademark dilution, and false designation of origin.[i]
The mark at the center of the controversy is the ‘12th Man’ mark which was first used by the University in 1922, as homage to a student named E. King Gill for his dedication towards the University’s football team. Over the years, the mark has come to distinguish the University from others in the sphere of athletic entertainment services, merchandise, etc. Significant efforts have been made to offer superior goods and services under the mark. To protect its rights, the University also registered the mark in various classes.
In 2006, this mark was used by ICI inside its stadium with respect to football entertainment services. Upon becoming aware of this unauthorized use, the University issued a cease and desist letter. After back and forth communication, ICI assured the University that the mark would not be used for any goods or services for which the University already has registrations. Furthermore, ICI also assured that it would not make use of the said mark outside the Indianapolis auditorium. Though it is unclear as to why the University let go of the matter, it is guessed that either ICI had stopped using the mark, or such usage was constituted as being de minimus use within the stadium.
In 2012, the University was once again confronted with a similar situation, i.e. unauthorized use of the mark by ICI. Consequently, cease and desist letters were once again sent to ICI, the same not being responded to. However, the matter took a serious turn in 2015 when ICI sent out “solicitation to buy ICI single-game football tickets under the tagline ‘Join the 12th Man’”.[ii] Furthermore, ICI was also using the mark to promote its merchandise, the same being sold throughout the U.S. Hence the present complaint being filed.
According to the University, use of the mark by ICI is likely to create confusion in the mind of the customers. Furthermore, it may also result in the dilution of the mark. The goodwill and recognition attributed to the mark is the result of hard work put in by the University. The unauthorized use of the mark by ICI, allows it to capitalize on this goodwill attained by the University as a result of the mark. Since ICI was aware of the University’s rights, the only conclusion that can be drawn is that ICI intentionally and wilfully used the mark so as to ride on the goodwill attained by the University.
As per the University, the unauthorized use constitutes trademark infringement and unfair competition, and unless ICI is stopped from using the mark, the University will continue to suffer irreparable harm. The complaint against ICI seeks to restrain it from using the mark, also praying that ICI be directed to deliver goods, etc. bearing the mark, for destruction, or to provide the University with proof of destruction.
As the suit is still at an initial stage, it is yet to be seen whether a compromise can be reached by the parties.
[i] Texas A&M University vs. Indianapolis Colts Inc., Case No. 4:15-cv-03331, Hous. Div., Southern Dis. C. of Tex., U.S., Nov. 12, 2015.
[ii] Ibid, at p. 5.
For further information, please contact:
Raashi Jain, LexOrbis
mail@lexorbis.com
