INTELLECTUAL PROPERTY LAW
Beware of Dawg, Beware of Owner, Too

By Joseph Hanna

The Cleveland Browns’ faithful have reason to cheer again after a ruling that granted the National Football League Properties, Inc. (NFLP), and the Browns the rights to the phrase “Dawg Pound.”

In the early 1980s Cleveland’s defensive back Hanford Dixon would bark like a dog to pump up his teammates. Fans in the stadium’s bleacher section joined Dixon, and before too long the 10,000-seat bleacher section became known as the Dawg Pound. The die-hard Browns fans that made up the Dawg Pound began wearing dog noses, dog masks, and bone-shaped hats.

The NFLP noticed the vastly increased sale of the Browns’ merchandise and considered Cleveland to be a “hot market.” In 1985, in order to capitalize on the team’s popularity, the NFLP asked the Browns to register the marks “Cleveland Browns Dogs” and “Cleveland Browns Dawgs” with the Ohio Trademark Office. The “Cleveland Browns Dawgs” was officially registered with the state of Ohio in 1988.

The NFLP was established to protect the integrity of the NFL and its teams’ trademarks in dealings with third parties via licensing agreements. The NFLP listed Dawg Pound under the Club Mark category, licensing the use of the logo to various third parties. In the mid-1990s, Hawaii-Pacific Apparel Group (HP) began to market a line of non-football-related apparel bearing phrases such as “Dawg Pound,” “Lil Dawg Pound,” and “Top Dawg.” HP’s president and sole shareholder created this line of clothing after his son was given the nickname “Top Dawg” by members of his baseball team. In March 1994 HP attempted to register the Dawg Pound mark with the U.S. Patent and Trademark Office (USPTO) (alleging a date of first use in commerce of March 1994); however, the NFLP opposed the registration, and the mark was never registered.

In 1995 the unthinkable happened to Browns fans and the city of Cleveland when owner Art Modell announced that he was moving the franchise to Baltimore. In February 1996, however, the NFL announced that Cleveland would again be granted an NFL franchise and the rights to the Browns’ name, colors, and memorabilia. In 1999 Cleveland would welcome back its beloved Browns and the Dawg Pound with open paws.

In March 1999, prior to the start of the 1999-2000 NFL season, the Browns and the NFLP filed an intent-to-use application with the USPTO for the Dawg Pound mark. The USPTO rejected the application in August 1999 owing to its similarity to, and likelihood of confusion with, HP’s Lil Dawg Pound mark (which HP registered with the USPTO in 1996). In March 2000 HP’s lawyers sent a letter to the NFLP and the Cleveland Browns organization demanding that they immediately cease and desist using the Dawg Pound mark. In August 2000 the NFLP commenced a lawsuit against HP in Ohio district court, seeking a declaration of non-infringement. The court dismissed the case for lack of personal jurisdiction over HP.

Thereafter, HP commenced an action against the NFLP and the Browns in New York. The initial issues involved the applicable law concerning priority of use and the right to exclusive use of a trademark. The exclusive use of a trademark stems from its appropriation and subsequent use in the marketplace. Only the senior user of a trademark can bring a claim for trademark infringement or state or federal unfair competition, and not every use of a mark will suffice to create enforceable rights. Rather, the test for establishing the sufficient prior use in commerce of a mark 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.” Use of a mark by a licensee to identify or distinguish goods is sufficient to create enforceable rights in favor of the licensor. However, a licensor must exercise some degree of control over the use of the mark by the licensee, at the risk of abandonment of the mark.

The district court found that the NFLP and the Browns were entitled to summary judgment on HP’s claims of infringement because the defendants licensed the Dawg Pound mark to third-party manufacturers and distributors, including Logo-7, Hallmark, Reebok, and Nutmeg Mills, years before HP alleged to have first used the mark in 1994.

HP conceded that “it could be argued that use by a licensee qualifies as ‘use’ for trademark ownership purposes in some situations.” However, it argued that the NFLP and the Browns did not control their licensees in the Dawg Pound mark as required by law. The court disagreed with HP’s analysis. The facts of the case showed that in order for a licensee to begin using the Dawg Pound mark on approved merchandise, the licensee had to sign lengthy licensing agreements with the NFLP. The licensing agreements required the licensee to submit samples of its products to the NFLP in order to receive quality-control approval prior to placing its goods in the stream of commerce.

The court concluded its analysis regarding the priority-of-use issue by stating that “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.” The court held that the Browns’ and the NFLP’s licensing of the Dawg Pound mark was sufficient, as a matter of law, to establish priority of use and granted partial summary judgment to the Browns and the NFLP.

Finally, the court addressed whether the Browns and the NFLP had abandoned their rights to the Dawg Pound mark. HP argued that the defendants’ use of the mark was only sporadic at best between 1995 and 1999 (the period when the Browns did not have an NFL franchise in Cleveland) and they failed to oppose HP’s registration of its Lil Dawg Pound mark in 1996. A finding of abandonment requires proof by clear and convincing evidence that use of the mark “has been discontinued with intent not to resume such use,” and it would defeat an alleged owner’s claim of priority. “Once abandoned, the mark reverts back to the public domain whereupon it may be appropriated by anyone who adopts the mark for his or her own use. Hence a party that is found to have abandoned its mark is deprived of any claim to priority in the mark before the date of abandonment.” No reasonable jury could find that the Browns and/or the NFLP abandoned the mark. Indeed, the record reflects that through letters from assistant counsel for NFLP to alleged trademark infringers, defendants enforced what they perceived to be their rights in the Dawg Pound mark during the period between 1995 and 1999.

The Browns and the NFLP established their status as senior users of the Dawg Pound mark by showing that they had licensed the mark years before HP’s alleged first use. Three of the four claims in HP’s complaint were dismissed, and the Browns’ and the NFLP’s counterclaim for a declaration of noninfringement was similarly granted—giving the famed Dawg Pound something to bark about.

FOR MORE INFORMATION ABOUT THE SECTION OF INTELLECTUAL PROPERTY LAW

This article is an abridged and edited version of one that originally appeared on page 8 of IPL Newsletter, Summer 2006 (24:4). For more information or to obtain a copy of the periodical in which the full article appears, please call the ABA Service Center at 800/285-2221.

Website: www.abanet.org/intelprop

Periodicals: IPL Chair’s Bulletin, a monthly update of Section activities and timely intellectual property issues; IPL Newsletter, a quarterly newsletter with current developments and Section news; Annual Report, a comprehensive summary of committee activities.

Books and Other Recent Publications: Fundamentals of Intellectual Property Valuation: A Primer for Identifying and Determining Value; The Intellectual Property Handbook: A Practical Guide for Franchise, Business and IP Counsel; Patent Litigation Strategies Handbook, 2d ed. Pamphlet series intended for clients, including Marketing Your Invention, Submitting an Idea, What Is a Patent?, What Is a Trademark?, and What Is a Copyright? Extensive course materials in connection with CLE programs are also available.

Joseph Hanna practices with Goldberg Segalla LLP in Buffalo, New York. He can be reached at .

Copyright 2007

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