Texas A&M Wins Trademark Suit Against Soap Company In Washington State By Playing Six Degrees Of Trademark Licensing

from the cleaning-up dept

Thu, Jul 19th 2018 7:49pm — Timothy Geigner

Readers here will likely be aware of the tortured history of Texas A&M's "12th Man" trademark. If you're not, the term describes the fans of the team and their tendency to make so much noise to effect on-field play during games. A&M, which holds a trademark for the term, has made a name for itself as a trademark bully, going around and threatening basically anyone that uses anything remotely like that term, even as it has in the past infringed on the IP of others. The school has been so successful in locking down this term for use in anything sports related that the Seattle Seahawks, the NFL team that also refers to its fans as its "12th Man", pay a licensing fee to the school to do so.

And now that licensing arrangement appears to be part of the reasoning A&M's legal team used to sue a soap company based in Washington State for using the "12th Man" term as well. In the school's filing, embedded below, it argues that because the soap company resides in the same state as the Seahawks, and because the company's soap product "12th Man Hands" includes an image of a football on the packaging, this makes it an infringement on its trademark, despite soap and athletics not being in related marketplaces. The USPTO somehow actually bought this six-degrees-of-licensing-separation argument.

According to the trademark board, the soap company was trying to call to mind the Seahawks’ 12th Man thing when designing the soap. There’s even a football on the “12th Man Hands” soap bar, and the company acknowledged it was trying to reach Seahawks fans, which makes sense because it’s a Washington-based company. But according to the board, the soap-makers didn’t clear their use of the 12th Man mark with A&M specifically. That appears to have hurt their case.

And the board ruled against the soap company. That's ridiculous for several reasons. First, no linkage in geography, nor the company's desire to reach Seahawks fans, creates confusion on its own in the public. Other than the image of a football, there is no other linkage to the Seahawks at all. It's just a puck of soap with something of a stock image of a football being held by a hand. Nobody is going to look at that and think it was soap branded by the Seahawks.

Secondly, even if the above weren't true, the confusion would be between the soap company and Seahawks, not Texas A&M. Whatever the licensing agreement between the Seahawks and the school, there is absolutely zero chance for anyone in the public thinking that Texas A&M has anything to do with this soap company. That, I'm confident saying, is completely inarguable. If anyone should have sued here, it should have been the Seahawks, and even that suit would have been ridiculous. A&M included information about past licensing deals for soap with other companies, but none of them were for "The 12th Man" use, and all of them were instead for university-specific terms and imagery, such as its logo.

How in the world the Trademark Board ever bought into this is beyond me.

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Filed Under: 12th man, soap, trademark, uspto
Companies: texas a&m

15 Comments

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some language fanatic, 19 Jul 2018 @ 9:13pm

http://theoatmeal.com/comics/misspelling

see the affect effect section to never make that mistake again.
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David, 20 Jul 2018 @ 12:26am

They could sue Carol Reed
For the motion picture "The Third Man", obviously an allusion to a quarter pint of their trademarked beer. Wait, they don't have a beer. But then they also don't have a soap, so that should not be a problem.
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tweetiepooh (profile), 20 Jul 2018 @ 1:34am

Sue any soccer team or the sport of cricket
Many 11 a side sports refer to their fans as their 12th man and it is a term used in cricket for a substitute player that can field but can't bat, bowl or "work behind the wicket". They are also used to take equipment and messages out to the batsmen.
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That Anonymous Coward (profile), 20 Jul 2018 @ 1:37am

IP... making lawyers rich & hurting sane peoples brains.
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Anonymous Coward, 20 Jul 2018 @ 3:01am

It isn't so much that they bought the argument so much as it is that they were bought for the argument.
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Anonymous Coward, 20 Jul 2018 @ 4:56am

Whats plain to some is not to others
In the southwest the 12th man is synonymous with Texas A&M but maybe less so in other parts of the country. Despite being soap, a 12th man reference with a football image would immediately bring Texas A&M to mind down south and especially in Texas. For that matter anyone from this area traveling to or relocating to the Seattle area would take notice. I doubt you could use the argument that in Dallas we could make a bar of soap called Coca Cola and get away with it because its soap and not soda. This isn't one of the crazy beer name trademark suits, its been around a long time and has a lot of history. They clearly tied the 12th man to football and in much of the country (not everywhere) the first thing that comes to mind is Texas A&M. Now, is that fair, maybe not but it is what it is and the Seattle Seahawks came to that conclusion. Also, if they failed to actively protect the trademark they could lose it by virtue of allowing others to use without protesting. I know Techdirt hates trademark disputes but this one is not that far of a reach here in the old Southwest Conference region, Texas, Oklahoma, Arkansa, etc.
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Anonymous Coward, 20 Jul 2018 @ 5:13am

Re: Whats plain to some is not to others
On the other hand, it's soap.
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Anonymous Coward, 20 Jul 2018 @ 5:46am

The 12th Man - Aussie style
Warning - coarse language alert.

https://www.youtube.com/watch?v=TC0A9dOBQQY
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bearsfan (profile), 20 Jul 2018 @ 6:35am

Re: Whats plain to some is not to others
The only thing plain to see is the aggressive overcompensation.
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Anonymous Coward, 20 Jul 2018 @ 9:09am

'How in the world the Trademark Board ever bought into this is beyond me'

i think the operative word is 'bought', dont you?
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bwburke94 (profile), 20 Jul 2018 @ 11:57am

Re:
Personally, I prefer the xkcd version.

https://www.xkcd.com/326/
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Anon, 20 Jul 2018 @ 10:25pm

Re: Re: Whats plain to some is not to others
With a football on the label.
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Amaresh Biswal, 21 Jul 2018 @ 6:25am

Advertisement Ideas
Nice Article.. Personally, i prefer this
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Anonymous Coward, 23 Jul 2018 @ 9:39am

I have a BS and a PhD in physics from Texas A&M and this, like many other things done there, is embarrassing.
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Steerpike (profile), 23 Jul 2018 @ 12:00pm

I don't agree with the "inarguable" likelihood of confusion comments. The TTAB noted that licensed products including the 12th Man mark include a wide variety of offerings, such a coffee, signs, stoneware, phone cases, earrings, tattoo sheets, food trays, towels (which the TTAB finds particularly important) and so on. Given that list of licensed products, it isn't unreasonable for the TTAB to find that people would likely think the soap is also licensed--one of many licensed products.

Which isn't to say there is necessarily going to be such confusion. Only that that TTAB decision isn't as unreasonable as made out in the article.

Had they not found a likelihood of confusion, it would have been interesting to see what they found on the dilution claim.
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