CHIN, District Judge.
Fans of the National Football League (the "NFL") have since the early eighties associated the phrase "Dawg Pound" with 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 (where the Browns have played since 1999). In the mid-nineties, plaintiff Hawaii-Pacific Apparel Group, Inc. ("HP"), began to manufacture and market a line of non-football-related apparel using the DAWG POUND phrase as a mark. In 1994, HP attempted to register the mark DAWG POUND with the United States Patent and Trademark Office (the "PTO"), but the application was opposed by defendant National League Football Properties, Inc. ("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 DAWG-related merchandise (including DAWG POUND merchandise).
In 1999, when the NFL was preparing to bring a Browns franchise back to Cleveland after a four-year absence, NFLP filed an intent-to-use application for the DAWG POUND mark with the PTO. The application was rejected because of its similarity to HP's LIL DAWG POUND mark. Now, more than twenty years after the "Dawg Pound" was born, more than sixteen years after defendants claim to have begun using the mark, more than ten years after HP claims to have begun using the mark, and more than six years after litigation of this issue commenced in Ohio, the parties seek in this action to resolve once and for all which of them has superior rights to the mark.
On these cross-motions for partial summary judgment, the principal issue is who came first—whether the Browns and the NFLP or HP first used the DAWG POUND mark in commerce. As I conclude that a reasonable jury could only find that the Browns and NFLP are the senior users, their motion for summary judgment is granted and HP's is denied, to the extent set forth herein.
STATEMENT OF THE CASE
The facts in this case are largely not in dispute. To the extent there is any dispute,
In 1984, Browns players and fans started to refer to the team's defense—and, eventually, the team's fans—as the "Dawg Pound." (Lucarelli Decl. ¶ 5). The phrase caught on quickly, and, in part as a result of the notoriety of the Dawg Pound, in the mid-eighties NFLP considered Cleveland to be a "hot market," as Browns-related merchandise was selling particularly well. (McDowell Decl. ¶¶ 13-14). In 1985, to capitalize on this market, NFLP asked the Browns
One of the functions of NFLP was to license the trademarks of the NFL and its teams to third parties via licensing agreements. (McDowell Decl. ¶ 4). NFLP referred to these marks as "NFL Marks," and broke them down into five categories:
(Id.). NFLP considered DAWG POUND to be a Club Mark, and licensed its use to various third parties. (Id. ¶ 17). Prior to 1994,
While all this was happening, HP was founded in 1986 by Donald Shepherd (its president and sole shareholder) and began to manufacture and distribute apparel bearing phrases such as "DAWG POUND," "LIL DAWG POUND," and "TOP DAWG" in the early and mid-nineties, after Shepherd's teenage son was given the nickname "Top Dawg" by members of his baseball team in 1991. (Shepherd Decl. ¶ 1; Shepherd Dep. at 17:7-21, 45). In March of 1994, HP attempted to register the DAWG POUND mark with the PTO (alleging a date of first use in commerce of March 1994), but NFLP opposed the registration and the mark was never registered. (See HP Opp. Br. at 1; Shepherd Decl. ¶ 3).
In 1995, the Browns franchise moved to Baltimore and became the franchise now known as the Baltimore Ravens. (Proper Decl. ¶ 12). There was thus no longer a "Dawg Pound" in Cleveland, in the sense that the Browns were no longer in existence.
During this period when there was no "Dawg Pound," HP sold its apparel in
In 1999, the Browns and the "Dawg Pound" returned to Cleveland.
HP commenced this action by filing a complaint on October 4, 2004. The complaint contains four counts: trademark infringement under the Lanham Act, unfair competition under the Lanham Act, unfair competition under state law, and a declaration of non-infringement. Defendants answered on December 3, 2004, and asserted seven counterclaims that, in substance, mirror HP's claims. On January 24, 2005, HP replied to the counterclaims, and on February 11, 2005, HP filed an amended reply to the counterclaims that asserted additional counterclaims for copyright infringement. Defendants answered these counterclaims on April 19, 2005. After discovery as to liability only,
The issues to be decided on these crossmotions are whether any issue of fact exists to be tried as to which party is the senior user and, if not, whether HP or the Browns and NFLP used the mark first.
It is a fundamental principal of trademark law that the right to exclusive use of a trademark
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)); see also Talk To Me Prods., Inc. v. Larami Corp., 804 F.Supp. 555, 559 (S.D.N.Y.1992) ("The exclusive right to a distinctive mark belongs to the one who first uses it in connection with a particular line of business."), aff'd, 992 F.2d 469 (2d Cir.1993). It is therefore only the senior user of a mark that can bring a claim for trademark infringement or state or federal unfair competition. See Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 150 (2d Cir.1997) ("[T]o recover for unfair competition [a plaintiff] must show . . . an association of origin by the consumer between the mark and the first user.") (citation omitted) (emphasis added); id. at 149 ("Under New York law, common law unfair competition claims closely resemble Lanham Act claims except insofar as the state law claim may require an additional element of bad faith or intent.") (quoting Girl Scouts v. Bantam Doubleday Dell Publ'g Group, Inc., 808 F.Supp. 1112, 1131 (S.D.N.Y. 1992)).
Not every use of a mark will suffice to create enforceable rights. Rather, "[t]he `talismanic test' for sufficient prior use in commerce is whether a person's use of the mark was sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark." Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 15 F.Supp.2d 389, 396 (S.D.N.Y.1998). Use of the mark by a licensee to identify or distinguish goods is sufficient to create enforceable rights in favor of the licensor. See 2 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 18.46 (4th ed. 2004) ("Ownership rights in a trademark . . . can be acquired and maintained through the use of the mark by a controlled licensee even when the first and only use of the mark was made . . . by the licensee."); see also Turner v. HMH Pub. Co., 380 F.2d 224, 229 (5th Cir.1967) ("In our view . . . the Lanham Act definitely contemplates that a trade or service mark may be acquired through its use by controlled licensees, even though the registrant itself may not have used the mark."); Pneutek, Inc. v. Scherr, 211 U.S.P.Q. 824, 833, 1981 WL 40499 (Trademark Tr. & App. Bd.1981) (same).
NFLP and the Browns contend that they are entitled to summary judgment on HP's claims of infringement because they licensed the DAWG POUND mark to others years before HP alleges to have first used the mark in 1994,
HP concedes that "it could be argued that use by a licensee qualifies as `use' for trademark ownership purposes in some situations," but argues that NFLP and the Browns did not, as required, control their licensees. (HP Br. at 21-22). A reasonable jury could only conclude otherwise. 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.
In sum, 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.
Finally, there is some suggestion in the briefs 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
Here, no reasonable jury could find, by clear and convincing evidence, that the Browns and/or NFLP abandoned the mark. 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.
For the foregoing reasons, HP's motion for partial summary judgment on the issue of priority of use is denied, and that of the Browns/NFLP is granted. Accordingly, counts one, two, and three of HP's complaint are dismissed. Furthermore, summary judgment is granted in favor of the Browns and NFLP on count one of their counterclaims (declaration of non-infringement). Still remaining are the Browns/ NFLP's counterclaims for trademark infringement, as well as HP's claim for a declaration of non-infringement and its claims of copyright infringement.
The parties are directed to appear for a pre-trial conference on February 24, 2006, at 11:30 a.m., in courtroom 11A of the United States Courthouse, 500 Pearl Street, New York, New York.
15 U.S.C. § 1055. Thus, the Lanham Act contemplates allowing applicants to register marks based on controlled use by another.
All Licensed Products and their packaging must receive quality control approval by NFLP. All Licensed Products will meet uniform standards of high quality, style, construction, and appearance set by NFLP. Licensee agrees that it will sell no Licensed Products unless an NFLP Licensed Product Quality Control Approval Form ("Product Approval Form") for that Product has been signed by NFLP, returned to Licensee, and remains in full force and effect. The following conditions and procedures will govern NFLP's issuance of Product Approval Forms:
(a) Licensee will supply within 10 days of any request by NFLP, at no charge to NFLP, such reasonable number of samples of Licensed Products and their packaging as NFLP may require.
(b) At NFLP's request, Licensee will present its complete line of Licensed Products to NFLP at a mutually agreeable time, date, and site.
(c) NFLP will make best efforts to evaluate Licensed Product submissions within 45 days of their receipt by NFLP.
(d) Licensee will not deviate from the standards of quality of samples upon which Product Approval Forms are based. Departure from such quality standards constitutes breach of a material term of this License. NFLP may purchase at Licensee's expense any Licensed Products found in the marketplace which in NFLP's judgement [sic] are inconsistent with approved quality standards and bill such costs to Licensee. Licensee must also pay all Royalties otherwise consistent with approved quality standards.
(e) Product Approval Forms must be renewed annually by NFLP pursuant to the terms and conditions set forth above.
(McDowell Decl. Ex. 11).