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

from the cleaning-up dept

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.

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

Texas A&M Accused Of Committing Copyright Infringement In Effort To Bolster Trademark Protection For '12th Man'

from the live-by-the-ip,-die-by-the-ip dept

I'm not sure there is a more annoying group of stories about trademark protectionism than that of the "12th Man." What most likely assume is a common term at football games, popularly denoting the impact a raucous crowd can have on the opposing team, is actually a closely guarded trademarked term of Texas A&M. So closely guarded, in fact, that the school has not only policed use of the term by other football organizations, but it has also seen fit to threaten breweries and double-amputees over their use of the term. So concerned is Texas A&M by the moral position on intellectual property, in other words, that there are no limits on how it will act to protect its trademark.

That includes violating someone else's intellectual property, it seems. It appears the university is being sued for copyright infringement after having posted on its website a large swath of an unpublished book by an author on the history of Texas A&M, all in order to bolster its own claims on the trademark for the "12th Man."

Alabama resident and author Michael J. Bynum sued the Texas A&M University Athletic Department, the Texas A&M University 12th Man Foundation and three school employees on Thursday in the Southern District of Texas, claiming the athletic department posted the “heart” of his unpublished book “12th Man: The Life and Legend of Texas A&M’s E. King Gill” on its website “nearly word-for-word” in January 2014 without his permission... He made several trips from Alabama to Texas, visiting Gill’s high school in Dallas and Texas A&M University where he met with Brad Marquardt and Alan Cannon, media-relations employees in the school’s athletic department.

Cannon and Marquardt are now defendants in the lawsuit.

Shortly after a follow-up email exchange to Marquardt about the book, the infringing post made up of a draft Bynum had sent to the defendants suddenly appeared on the school's website. Gone from the post was the copyright notice Bynum had included on his draft, along with apparently any attribution to Bynum himself as the author of the work. That post was then used to bolster the ownership claim to the "12th Man" by the school against the Seattle Seahawks, with whom the school eventually worked out a licensing deal for the term. In other words, Texas A&M committed copyright infringement in order to try and protect a fairly generic trademark.

Now, in fairness to Marquardt and the school, the post was taken down when Bynum called the next day to complain. Marquardt even offered the following explanation for how this all happened in an email to Bynum.

“It was an incredibly coincidental mix-up on my part,” the email said. “I was cleaning my office, which you may recall is generally a cluttered mess. While going through files, I found a story of the 12th Man on some slightly yellowed 8.5×11 paper. I had no recollection of it [sic] origin.

Look, for the everyday man, this kind of incidental copyright infringement might seem like a reasonable mistake to have made. But, of course, this is Texas A&M we're talking about, and the school is super into intellectual property protection. Certainly its officials ought to know better than to simply post anything they might find on yellowing printer paper that happens to be lying around the office from who-knows-where? And the taking down of the post might have been fine if the school's post hadn't managed to go viral almost immediately after it had been posted.

It's sort of fun how you can pretty much set your watch to how those who are the most vociferous in protecting intellectual property will be caught violating it.

Filed Under: 12th man, copyright, michael bynum, trademark
Companies: texas a&m

Texas A&M Concerned That Indianapolis Colts' Use Of 12th Man Might Confuse Football Fans

from the hut-hut-lawsuit! dept

Texas A&M has a long history of defending its registered trademark of "12th Fan" to ridiculous lengths. Between threats to breweries, threats to double-amputee cancer-survivors, and generally serving as the template for the Seattle Seahawks' own idiotic over-enforcement of a rival 12th fan trademark, the university has managed to foster a climate of permission-culture over a phrase that has become commonly used in American football circles. See, the 12th man refers, in most cases, to fans of football teams that show up and make so much noise as to influence the opposing team on the field. Lots of teams have used the phrase over the years, including the Indianapolis Colts. Well, the Texas A&M lawyers have finally had enough and have brought suit against the Colts, hilariously claiming that football fans might see the Colts' use of the phrase and think there's a connection between the school and the professional football team.

Texas A&M president Michael K. Young said in a statement from the school that the Colts have used the trademark "without our permission after repeated attempts to engage on the matter."

"We bear no ill will toward the Indianapolis Colts," Texas A&M University Chancellor John Sharp said in the statement. "We simply want them to respect our trademark rights. Our actions are consistent with our previous trademark enforcement efforts in this regard."

Well, that's certainly true, but the point is that those past actions were equally ham-fisted and hilariously disingenuous when they claimed that football fans would somehow draw a direct association between a Texas university and a professional football team or beer-maker over the use of the phrase. This is no different, in that it isn't at all about customer confusion, but rather about licensing deals that are quite lucrative for the school. The previous spat with the Seattle Seahawks, for instance, resulted in the Seahawks licensing the use of the phrase. That particular deal wasn't as lucrative, because the Seahawks can afford skilled lawyers, too. In fact, the $5,000 whole dollars per year the Seahawks pay Texas A&M every year for use of the phrase is so small as to be laughable. But if you can string a bunch of those licensing agreements together, while bullying smaller entities into other licensing arrangements? Well, then you have a decent amount of money to talk about.

Still, it's high time that somebody out there pushed back on the laughable claims Texas A&M makes in its trademark filings. Keep in mind that the use of the "12th Man" phrase by the Colts amounts to it appearing in one place in its stadium to honor fans and in solicitations for tickets. From this, Texas A&M claims:

Defendant's unauthorized use of the mark 12TH MAN in connection with its professional football entertainment services and its various products is likely to cause confusion, or to cause mistake, or to deceive customers and potential customers as to an affiliation, approval, license, endorsement, sponsorship, or other connection with Texas A&M, when none exists.

That's obviously not true. The phrase, at this point, has become so commonplace for use among football fans that nobody is even thinking about origins when they hear it. Certainly nobody going to a Colts game is thinking about the A&M Aggies. By my reading, the filing doesn't even attempt to show any instances of actual confusion, probably because none exists.

Hopefully the Colts will do what the Seahawks didn't and mount an aggressive defense.

Filed Under: 12th man, football, trademark
Companies: indianapolis colts, texas a&m

The Trademark Lawyers For The Seattle Seahawks Have Apparently Lost Their Minds

from the trademark-the-planet dept

You may recall that there have been recent trademark issues over the term "12th Man", which Texas A&M insists is its alone to use, even as the Seattle Seahawks perhaps use it most famously in describing their rabid crowds and the deafening noise their home stadium produces. Well, on the eve of the Seahawks returning to the Super Bowl, the trademark lawyers for the team have decided to make a run at getting their own trademark on the number "12" ... and just about everything else they could think of as well.

Despite that long history of onomatopoeia in the sport, the Seahawks are now trying to trademark the word “boom” and use it for the team’s own purposes. The effort is part of a quiet legal strategy in which the team has filed some two dozen trademark applications since October 2013 for phrases such as “Go Hawks” and the number “12.”

Football and the word “boom” have been married for decades, long before someone nicknamed Seahawks defenders the “Legion of Boom.” Way back in the 1960s, Minnesota Vikings running back Bill Brown was known as “Boom-Boom” for his similarly punishing style. Ex-coach John Madden bellowed “boom” during play-by-play TV broadcasts so often that, by the 1990s, it became his personal catchword, used in commercials featuring the popular pitchman.

No matter, apparently, because the attorneys are here to make sure the long history of "boom" and "numbers" in football belong to them for commercial purposes. The idea that a word that describes a sound could be locked up by a team, not to mention a number that describes the fanbase as a part of the team, is absolutely ludicrous. But the flag bearing the number "12" has already been approved for trademark. We'll have to see about the "boom." As for "Go Hawks", good luck to the Seahawks because there are very interested parties lining up to object.

The Seahawks’ aggressive quest for new revenue has led both the NBA and NHL to try to slow one of the trademark applications. And while Seattle’s owners were once sued over the use of “12th Man,” the team is now trying to seize control of many other variations of the term.

You can bet the Atlanta Hawks in the NBA and the Chicago Blackhawks in the NHL will be throwing lawyers at the Seahawks' lame attempt to lock up language. Those two teams alone have an insane amount of merchandise in place bearing the "Go Hawks" language. So why haven't those teams ever tried to trademark the term? Well, because unlike the Seahawks, most professional sports teams are surprisingly lax when it comes to trademarking tangential language.

Scott Andresen, a sports entertainment attorney in Chicago, said the Seahawks’ pursuit of so many different trademarks contrasts with conduct by other teams, even those with a national brand such as the Dallas Cowboys.

“They’ve always been a little aggressive about securing intellectual property for themselves,” said Andresen, who has worked with other professional franchises. “They’ve really taken the position that the more intellectual property, the better.”

Just in the past few months, the Seahawks have petitioned the U.S. Patent and Trademark Office for a chance to oppose a film company’s application to trademark a geographical name featured in the blockbuster “Hunger Games” books and movies: “District 12.”...While the Seahawks’ team owners have submitted 24 trademark applications in the past 15 months, officials with the Green Bay Packers, last weekend’s opponent, have filed just 36 applications in the past 40 or so years, according to federal records.

So the Seahawks are especially insane when it comes to trying to trademark anything and everything. Perhaps they learned this deviant behavior at the hands of Texas A&M, and the cycle simply repeats itself with the victim becoming the perpetrator. Or maybe there's some kind of gas leak in the offices of the team's attorneys. Either way, it's probably time for a well-being check.

Filed Under: 12, 12th man, boom, go hawks, seahawks, super bowl, trademark
Companies: nfl, seahawks

Texas A&M Plays Hardball With A Double Amputee Over 12th Man Trademark

from the bully-for-you dept

You may recall past stories here covering Texas A&M and their aggressive protection of their trademarked phrase, "The 12th Man." That phrase refers to the crowd within football games cheering and/or booing loudly enough to have an effect on what happens on the field of play. Even in situations where the target of A&M's ire isn't actually competing against the school for anything commercial, the cease and desist letters are still sent. We've also discussed how organizations could protect their trademarks by offering $1 licensing rights to the phrase, thereby maintaining their mark while engendering some good will.

Well, boy, you'd think that such a scheme might be best used when a double-amputee cancer-survivor starts a website in Buffalo, NY called 12thmanthunder.com, dedicated to keeping the Bills in Buffalo. But, nope, A&M still went legal on him.

Charles Sonntag co-founded 12thManThunder.com, a website for people who wanted to keep the Bills in Buffalo. The Aggies are threatening to sue Sonntag for infringing on the "12th Man." Legally, it's an open question as to whether Sonntag's website actually infringes on A&M's mark. There's almost no likelihood of confusion between 12thManThunder in Buffalo and the College Station fan base. The Buffalo Bills — the actual NFL football team — ALSO have a deal with A&M to use the phrase. So it's not like A&M objects in principle to other people in far off places using the 12th Man. It's that they object to people using it without paying them a pound of flesh.

However, Charles Sonntag just happens to be a double amputee, cancer survivor who suffers from Albright's disease. He can't afford attorneys who can litigate this case — and he does have some kind of defense that his use does not infringe on A&M's mark — and he can't afford to pay A&M whatever it wants in "leave me alone" money.

Damn, I forgot about the Albright's disease, which presents as a skin and bone deformity in the legs, arms and skull. But, hey, I guess with old Chuck missing an arm and a leg, we shouldn't fully credit any sympathetic status for the Albright's, right Texas A&M? I mean, he's already chock full of PR-nightmare-fluid with the whole cancer and amputee thing. Yet, not only did the Aggies go after him, they pressed the issue when they felt he wasn't complying fast enough.

Texas A&M spokesman Shane Hinckley said the website's owners have been too slow to respond.

A&M wants all the 12thManThunder posters taken down (some are posted at area bars), and they want the Facebook group named changed. Did I mention that Sonntag is a double amputee? HE HAS ONE ARM AND ONE LEG! Could we give him a minute to deal with all of this?

Forget the damned minute and work out a micro-cost licensing agreement with him. Hell, can we get a more clear-cut case of trademark bullying than this?

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

Texas A&M Goes After Washington Brewery Over 12th Man Trademark

from the and-the-crowd-goes-wild dept

For some reason that I can't explain, the convergence of alcohol and trademark disputes seems to be a thing. Previously, we've seen how disputes over labels and area codes in beer brands have resulted in this sort of thing. More recently, we've also seen how these trademark disputes can result in new label artwork and brew names from sarcastic and creative breweries.

That last example was top of mind for me when I read about what seems to me to be a silly cease and desist letter sent to a small brewery in Washington State by Texas A&M over a brew they had made using the term "the twelfth man."

A family-owned brewery in Bothell, Wash. planned to sell "12th Man Skittles IPA" on Superbowl weekend but canceled the plans after receiving a cease-and-desist notice from A&M, which has trademarked the phrase. A&M lawyers actively police unlicensed uses of the trademark, which have increased with the Seahawks' run to the Super Bowl. Bothell is a town of about 34,000 located about 20 miles northeast of Seattle. The brewery is operated by Jim Jamison and his family, who have full-time jobs but run the business on the side from property in a residential area. It's only open on Saturdays from noon to 4 p.m.

The 12th Man Skittles IPA was thought up somewhat last minute by Jamison as a way to celebrate the Seahawks' 12th man tradition and star running back Marshawn Lynch's affinity for the candy. He brewed 5.6 gallons of the beer, which isn't even a full batch, with home brew equipment.

For those of you that aren't sports fans out there, the 12th man is a reference to the crowd in Seattle, who are so unbelievably loud as to both confuse the opposing team's offense and generate enough decibels to wind up on the Richter scale. What's strange in this case is that a brewery ostensibly isn't in the same business as a public university. So, while A&M indeed has a trademark and a long tradition on the concept of "the 12th man", it's unclear to this writer how these two entities are competing in commerce. Add to that the fact that it's quite unlikely that any morons in any stages of hurry would be confused enough to think that a tiny amount of beer in Washington had something to do with a college over two thousand miles away, and the common retorts offered by A&M don't seem to hold much water.

Shane Hinckley, A&M's interim vice president for marketing and communications, said A&M has employees who actively watch for trademark violations but that he didn't remember how the small brewery got on the giant university's radar. He said A&M officials have been more actively watching for trademark infringements in the last few weeks.

"The reason we send out cease-and-desist letters is to, No. 1, show we are protecting our brand, which is important in the eyes of trademark law," Hinckley said. "And No. 2 is that infringing use has the potential to dilute our brand."

Fine, but those provisions in trademark law don't really apply if there isn't an element of brand confusion in the same arena of commerce. What might otherwise be the legitimate proactive protection of a trademark is instead just behaving dickishly. But, alas, Jamison didn't have the resources or the will to fight this nonsense, so he relented, calling his brew by another name. A wonderfully appropriate name.

The beer will still be on tap Saturday, just under a different name -- "Cease & Desist IPA." Jamison said he received no other legal notices but dropped "Skittles" from the name just to be safe.

"We're going to serve it in 12-ounce glasses, going with a '12th man' theme, but we won't call it the 12th man pour," Jamison said. Jamison is not upset about A&M's legal action and said that more than anything he is amused. He said A&M's lawyers were really nice and were satisfied with his actions to comply with their demands.

I don't know if I've ever heard of a business model centered around gaining notoriety via cease and desist notices, but Jamison appears to be Streisanding his way to success.

Filed Under: 12th man, beer, likelihood of confusion, moron in a hurry, trademark
Companies: texas a&m