Sport slogans and trademark law: are the Dallas Cowboys really 'America's Team'?

McMillen, John ; McMillen, Rebecca

Introduction

Love or hate them, the Dallas Cowboys are "America's Team." For more than 30 years, the prominent National Football League team has referred to itself as "America's Team," a reference to their national appeal and popularity, but also a term that infuriates opposing teams and fans. However, according to a Texas federal district court, the Dallas Cowboys indeed are America's team for trademark purposes (Dallas Cowboys Football Clubs, Ltd. v. Am.'s Team Props., 2009).

This article analyzes the Dallas Cowboys and National Football League's 2009 lawsuit against America's Team Properties and then presents implications for sport marketers. This case illustrates the importance of sport marketers completing proper trademark registration and also verifying whether a mark is already in use.

Case Background

The Dallas Cowboys (Cowboys) are one of 32 National Football League franchises marketed by NFL Properties, LLC, (NFLP). The Cowboys and NFLP filed a trademark infringement claim for the mark, "America's Team," against America's Team Properties, Inc. (ATP). ATP argued it owned the trademark which it purchased from Terrence Nash (Nash) in 1998 for $100.

According to the lawsuit, Nash registered the "America's Team" trademark and then sold t-shirts printed with the mark at various sporting events from 1990 through 1994. As a result of Nash's registration and his clothing sales, ATP asserted it legally owned the apparel rights for use of the phrase "America's Team."

In 1999, ATP decided to sell the trademark and ran an ad in the USA Today newspaper, stating it would auction the mark to the highest bidder. The Cowboys and NFLP brought a lawsuit alleging that ATP's actions infringed their common law and state trademark registration rights. Specifically, the Cowboys claimed that it had used "America's Team" as a service mark and trademark since 1979. The Cowboys also maintained that "America's team" was first coined by Bob Ryan of NFL Films Inc. and Doug Todd the Cowboys' public relations director. The Cowboys claimed to have used 'America's Team' in commerce as the title of the Cowboys' season highlight film in 1978.

The Cowboys also presented evidence that in 1992 they obtained Texas trademark registration for "Dallas Cowboys America's Team" for use on apparel. The Cowboys produced a variety of merchandise bearing the "America's Team" mark which it sold through various retail outlets, including Official Dallas Cowboys Pro Shops, at Texas Stadium, through catalogs, and on the Internet. The Cowboys also licensed "America's Team" to various merchandise manufacturers.

ATP also produced evidence that dating back to 2003 it had filed 58 trademark applications with the United States Patent and Trademark Office (USPTO) for a variety of uses of "America's Team." The Cowboys and NFLP, however, opposed many of the applications and eventually filed suit.

Legal Analysis

A trademark is any word, name, symbol, or device, or any combination thereof, to identify and distinguish goods from those manufactured or sold by others (15 U.S.C. [section] 1127, 2002). The primary purposes of trademark law are to secure the owner's rights in a mark and to protect consumers from confusion among competing products (Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH, 2002).

According to trademark law, "[t]he exclusive right to a trademark belongs to one who first uses it in connection with specified goods" (Blue Bell v. Farah Mfg., Inc., 1975). Proof of registration of a trademark is merely prima facie evidence of the registrant's exclusive right to use the mark in commerce for the services specified in the registration (15 U.S.C. [section] 1115(a), 2002). However, such proof does "not preclude another person from proving any legal or equitable defense or defect ... which might have been asserted if such mark had not been registered" (15 U.S.C. [section] 1115(a), 2002). Furthermore, federal registration does not pre-empt any preexisting common law rights of others (McCarthy, 2006).

To establish trademark priority, a mark must be used in a bona fide sale. "A mark shall be deemed to be in use in commerce ... when it is placed in any manner on the goods ... and the goods are sold or transported in commerce" (15 U.S.C. [section] 1127, 2002). Both ATP and the Cowboys agreed the use of "America's Team" extended back to 1979 when the Cowboys used "America's Team" in connection with a video. Furthermore, the Cowboys claimed it registered "Dallas Cowboys, America's Team" under Texas state law in 1992, alleging a first-use date of November 1, 1991, and also acquired a common law trademark in the term "America's Team" through longstanding and consistent use in commerce since 1979. However, ATP argued that the Cowboys did not use "America's Team" in connection with any apparel prior to ATP's use.

Because the Cowboys had referred to themselves as "America's Team" since 1979 in a variety of contexts and across a range of products, the Texas District Court concluded that the mark's use in newspapers and magazines reflected "consistent and longstanding references to the Cowboys as America's Team" (Dallas Cowboys Football Clubs, Ltd., 2009, p. 634). The court also noted that ATP's attempt to capitalize on the Cowboys' fame by auctioning "one of this country's most recognizable trademarks," helped demonstrate that the Cowboys' "America's Team" trademark was protectable (p. 636).

Once a mark is protected, likelihood of confusion becomes the central evidentiary test for infringement under the Lanham Act (Two Pesos, Inc. v. Taco Cabana, Inc., 1992). The Lanham Act requires the Cowboys to show that ATP's use of its mark created a likelihood of confusion in the minds of potential consumers (Dallas Cowboys Football Clubs, Ltd., 2009). The district court weighed "a long list of nonexclusive, nondispositive factors" known as the "digits of confusion." These factors included: 1) the type of trademark allegedly infringed, 2) the similarity between the two marks, 3) the similarity of the products or services, 4) the identity of the retail outlets and purchasers, 5) the identity of the advertising media used, 6) ATP's intent, and 7) any evidence of actual confusion (Dallas Cowboys Football Clubs, Ltd., 2009). After a review of all digits of confusion, the court concluded that a majority of the factors weighed heavily in favor of the Dallas Cowboys, while the other factors were at least neutral or tilted slightly in the Cowboys favor. For example, both marks acquired secondary meaning and contained identical wording: "America's Team;" both the plaintiff and defendant had similar products and distribution channels, i.e., both sold apparel in similar retail outlets and via the internet; and the defendant intentionally attempted to derive benefit from the reputation of the Dallas Cowboys. Therefore, the court found with "overwhelming weight" that the defendant's mark created a likelihood of confusion (p. 637).

After its likelihood of confusion analysis, the district court ruled in favor of the Cowboys, holding that the Cowboys had trademark priority over ATP with respect to the term "America's Team." However, the court stopped short of pronouncing the Dallas Cowboys as "America's Team" much to the chagrin of Cowboy fans, conceding only that the Dallas Cowboys have trademark priority over this particular defendant, leaving open the possibility that another sport team or trademark holder could have a claim superior to the Cowboys. However, in this case, the Dallas Cowboys acquired common law rights in the "America's Team" mark more than a decade before the defendant (p. 634). Unless another rights holder can produce trademark evidence that precedes the Cowboys' 1979 use of the mark, opposing teams and fans had better get used to the fact that in the eyes of trademark law, the Dallas Cowboys truly are "America's Team." In trademark law, it is a fundamental premise that "[t]he exclusive right to a trademark belongs to one who first uses it in connection with specified goods" (Blue Bell v. Farah Mfg., Inc., 1977, p 1265).

Sport Marketing Implications

The Cowboys common law and state trademark rights in "America's Team" were determined to be superior to ATP's federal trademark (Warren Publ. Co. v. Spurlock, 2009). Using the power of the Lanham Act, the district court cancelled ATP's U.S. Trademark and prevented the company from using the "America's Team" mark or any other similar designation "in the production, manufacture, advertisement, promotion, displaying for sale, offering for sale, sale, or distribution of any articles of merchandise in a context indicative of the Dallas Cowboys or American football," (Dallas Cowboys Football Clubs, Ltd., 2009, p. 646).

Given the current, difficult economic climate, sport organizations are attempting to squeeze more revenue out of existing licensing agreements. Before sport marketers attempt to generate additional licensing revenue, however, they must ensure trademark registration before use of any slogan (McKelvey, 2006). As this case demonstrates, sport marketers must be mindful of the trademark pitfalls which can exist with marks they have used for years. Therefore, sport marketers should be proactive and before a mark is used in commerce, the sport organization should first conduct a state and federal trademark search in an attempt to locate similar marks. Even if a mark is not registered, under common law, another user may already have superior rights in the trademark. To reduce the risk of potential litigation, sport marketers should always consult a trademark attorney before using any marks in any promotion or event.

Should a sport marketer encounter a dispute regarding the use of a mark, it is best practice to resolve the issue before continuing use of the mark. Any use of a trademark not legally owned by the sport organization may result in trademark infringement whether the infringement was intentional or not. As with ATP, infringers likely will be ordered to proceed with due diligence and remove any reference from its products, website, and promotional materials regarding the protected mark. Failure to do so can result in a myriad of legal consequences, including: injunctive relief, damages including the possibility of treble damages, attorney's fees, and court costs (15 U.S.C. [section] 1117, 2002).

References

Blue Bell v. Farah Mfg., Inc., 508 F.2d 1260 (5th Cir. 1975).

Dallas Cowboys Football Clubs, Ltd., v. America's Team Properties, Inc., 616 F. Supp. 2d 622 (N.D. Tex. 2009)

Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351 (5th Cir. 2002).

McCarthy, J. T. (2006). McCarthy on Trademarks and Unfair Competition (4th Ed). Eagen MN: West Group.

McKelvey, S. M. (2006)."Dawg Pound" decision provides guidance for fan group-related trademarks. Sport Marketing Quarterly, 15, 181-183.

The Federal Trademark Act, 15 U.S.C. [section][section] 1051-1127 (2002).

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 112 S. Ct. 2753, 120 L. Ed. 2d 615 (1992).

Warren Publishing Co. v. Spurlock, 2009 U.S. Dist. LEXIS 68199 (E.D. PA. 2009).

DISCLAIMER: Inquiries regarding this feature may be directed to John McMillen, jmcmillen@csufresno.edu. Anita M. Moorman, JD, is the editor of this section. She teaches sport law in the sport administration program at the University of Louisville. She can be contacted at amm@louisville.edu.

The materials in this column have been prepared for informational and educational purposes only, and should in no way be considered legal advice. You should not act or rely upon these materials without first consulting an attorney. By providing these materials, it is not the intent of the authors or editor to enter into an attorney-client relationship with the reader. This is not a solicitation for business. If you choose to contact the authors or editor through e-mail, please do not provide any confidential information.

John McMillen, PhD, JD, is the Sport Administration Coordinator in the Department of Kinesiology at California State University, Fresno. His research interests include sport art law.

Rebecca McMillen, MA, is the director of the Art Program at Fresno Pacific University. Her research interests include the legal aspects of sport sculpture, sport celebrity portraits, the art of sport law, and museum art education.