The latest episode of The Briefing by the IP Law Blog discusses a recent lawsuit filed by the Dimopoulos Law Firm, a personal injury firm based in Las Vegas, Nevada, alleging that the NFL threatened to sue the firm for trademark infringement. The dispute arose after the firm hired three professional athletes, including Maxx Crosby of the Las Vegas Raiders, to appear in an advertisement that used the firm’s black and silver color scheme. According to the law firm, the advertisement did not feature any logos or trademarks of the NFL, the Raiders, or any other sports teams. Despite this, the NFL sent a cease-and-desist letter to Dimopoulos accusing the firm of unauthorized use of the Raiders’ marks.
The grounds for the dispute are based on the NFL’s claims that the Dimopoulos Law Firm used hashtags including the Raiders’ marks and engaged in other unauthorized use of their marks. However, the law firm alleges that the advertisement did not feature any NFL logos or names, and that the disclaimer on the firm’s website and YouTube page made it clear that the firm was not affiliated with the NFL.
Even if the Raiders had protectible IP in their color scheme, their claim would be more of a false designation of association/affiliation claim under 15 U.S.C. § 1125. It is unlikely that there would be consumer confusion in that the consumer reasonably believes that the Raiders are providing legal services, but it is at least feasible that a consumer could believe that the Raiders are associated, affiliated, or otherwise endorse the law firm as a result of the advertisement. Ultimately, it comes down to whether the Raiders and the NFL have protectible IP in the color scheme.
Regarding the hashtag claim, while it is at least conceivable that a consumer could assume there must be a relationship between the firm and the NFL or the team if they were to see the silver and black uniforms in an advertisement that was returned in response to a search for #raiders or #raidernation, there is a disclaimer on the firm’s website and YouTube page that clearly states that the firm is not affiliated with the NFL. There are arguments on both sides and the claim is not clear cut.
The dispute is likely to hinge on whether the NFL and the Raiders have protectible IP in their color scheme and whether the law firm’s use of hashtags creates a false designation of association or affiliation with the Raiders or the NFL. Unfortunately, I don’t anticipate this matter will be decided by a trier of fact. It is far more likely it will resolve informally.
Learn more on the latest episode of The Briefing by the IP Law Blog.
Image by iStock Photos, supplied by Weintraub Tobin