AMENDED OPINION
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 evеntually 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
I. The Facts
The facts in this case are largely not in dispute. To the extent there is any dis
A. 1984-1994
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 quiсkly, 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 2 to register the marks CLEVELAND BROWNS DOGS and CLEVELAND BROWNS DAWGS with the State of Ohio Trademark Office. (Id. ¶ 15). CLEVELAND BROWNS DAWGS — a mark bearing those words and a design of three dogs in football uniforms — was eventually officially registered by the State of Ohio in 1988, as was a similаr design for CLEVELAND BROWNS DOGS. (Id.). Each of these trademark registrations expired ten years after the date of its issuance. (HP Ex. C).
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:
• “League Marks,” which included marks such as “National Football League,” “NFL,” “Super Bowl,” “Pro Bowl,” and the like;
• “Club Marks,” which included the names, symbols, designs, and colors of the various NFL teams;
• “Huddles,” which included copyrighted team mascots helmet designs, and other indicia of the teams;
• “Superstars,” which included special designs including Club Marks and the personal likenesses of one or more NFL players; and
• “Game Day,” which were special design treatments of the Club Marks marketed in connection with the term “Game Day” and/or the League Marks.
(Id.). NFLP considered DAWG POUND to be a Club Mark, and licеnsed its use to various third parties. (Id. ¶ 17). Prior to 1994, 3 NFLP accepted licensing fees for at least the following merchandise that used the phrase “Dawg Pound” in some form:
• T-Shirts: in 1989, Trench Manufacturing Co. sold 176 units of officially licensed t-shirts bearing the words “DAWG POUND” for a total of $15,108.60. (HP Exs. M & N).
• Christmas Cards: Cleveland-area Hallmark stores sold Christmas cards, copyrighted 1989 and 1990, that featured the DAWG POUND mark. (Noch Decl. ¶¶ 3-5). One such card depicted Santa Claus standing in front of a group of anthropomorphized dogs sitting in football stadium bleachers behind a banner that reads “CLEVELAND DAWG POUND.” (Id. Ex. 1). Another such card depicted Santa Claus sitting in a recliner watching a Browns game with a dog wearing a “BROWNS DAWG POUND” sweatshirt. (Id.). Both cards displayed the familiar NFL shield on the back with the words “Officially Licensed Product.” (Id.).
• Posters: In 1993, Andrew Noch & Associates (“Noch”) received a license from NFLP to manufacture and distribute a poster depicting a photograph of Municipal Stadium with the words “The Dawg Pound” underneath the photograph. (Noch Deck ¶ 5 & Ex. 4). Noch sold these posters to various retailers, including ten copies to a retailer called A.I.M. Enterprises, Inc., on February 16, 1994. (Id. Ex. 5).
• Logos: Logo-7, Inc., an apparel manufacturer later acquired by Tultex Corporation and then Reebok International Ltd., created graphic designs for use on its apparel, which were submitted to NFLP for its approval. (Barkes Deck ¶¶ 3, 7). NFLP received licensing fees for Browns-relаted logos bearing the word DAWG, including one in 1989 with “DAWG POUND” over a picture of a bulldog and the words “CLEVELAND BROWNS.” (Id. ¶ 13). Logo-7 sold $123,241.70 worth of merchandise bearing the words DAWG or DAWG POUND in 1989 and 1990. (Id. ¶ 18 & Ex. 6).
• Other Apparel: In 1992 and 1993, Nutmeg Mills, Inc., a sports apparel manufacturer, submitted various designs to NFLP for approval for use on Nutmeg’s apparel, including an image of a bulldog wearing a football helmet and jersey sitting in front of a doghouse with the words “DAWG POUND.” (Ivie Deck ¶¶ 1, 8-9, & Ex. 2). The entire image is contained between the words “Cleveland Browns.” (Id. Ex. 2). At least sixty units of clothing bearing the DAWG POUND mark were shipped to JCPenny, among other retailers. (Id. ¶ 10).
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 Deck ¶ 1; Shepherd Dep. at 17:7-21, 45). In Marсh 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 Deck ¶ 3). 4 Shepherd, who had no interest in football, was not aware until NFLP opposed the DAWG POUND registration that the words DAWG and DAWG POUND were commonly used to refer to the fans of the Cleveland Browns. (Shepherd Deck ¶ 3; Shepherd Dep. at 42, 84).
B. 1995
In 1995, the Browns franchise moved to Baltimore and becamе the franchise now known as the Baltimore Ravens. (Proper Deck ¶ 12). There was thus no longer a “Dawg Pound” in Cleveland, in the sense that the Browns were no longer in existence.
C. 1996-1999
During this period when there was no “Dawg Pound,” HP sold its apparel in
D. 1999-Present
In 1999, the Browns and the “Dawg Pound” returned to Cleveland.
5
On March 26, 1999 (prior to the start of the 1999-2000 NFL season), the Browns and NFLP — which had never registered or attempted to register DAWG POUND prior to this — filed an intent-to-use application with the PTO for the DAWG POUND mark. (Proper Decl. ¶¶ 12, 13). In August of 1999, the application was rejected on account of its similarity to, and corresponding likelihood of confusion with, HP’s LIL DAWG POUND mark, which had been successfully registered in 1996. (Proper Decl. ¶¶ 12, 13; HP Ex. L). On March 29, 2000, HP’s counsel sent a letter to the Browns and NFLP, demanding that they immеdiately cease and desist using the DAWG POUND mark. (HP Rule 56.1 Statement ¶ 25; Def. Rule 56.1 Statement ¶ 25). Five months later, in August of 2000, NFLP commenced a lawsuit against HP in Ohio district court, seeking a declaration of non-infringement. (HP Rule 56.1 Statement ¶ 26; Def. Response ¶ 26). The district court dismissed the case for lack of personal jurisdiction over HP, and the Sixth Circuit affirmed on February 2, 2004.
See Cleveland Browns Football Co., LLC v. Hawaii-Pacific Apparel Group, Inc.,
II. Procedural History
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 countеrclaims that asserted additional counterclaims for copyright infringement. Defendants answered these counterclaims on April 19, 2005. After discovery as to liability only, 6 the parties filed the current cross-motions for partial summary judgment on the issue of priority of use.
DISCUSSION
The issues to be decided on these cross-motions 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.
I. Priority of Use — Applicable Law
It is a fundаmental principal of trademark law that the right to exclusive use of a trademark
derives from its appropriation and subsequent use in the marketplace. The user who first appropriates the mark obtains an enforceable right to exclude others from using it, as long as the initial appropriation and use are accompanied by an intention to continue exploiting the mark commercially.
H.W. Carter & Sons, Inc. v. William Carter Co.,
Not every use of a mark will suffice to create enforceable rights. Rather, “[t]he ‘talismanie test’ for sufficient pri- or use in commerce is whether a person’s use of the mark was sufficiently public to identify or distinguish the marked goods in an apprоpriate segment of the public mind as those of the adopter of the mark.”
Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc.,
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, 8 and that therefore no reasonable jury could find that HP was the senior user. (Def. Br. at 6-7). I agree.
HP concedes that “it could be arguеd 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 fоr approval prior to placing them in the stream of commerce.
9
Moreover, the record further reflects that various licensees did indeed adhere to the approval process. For example, Jon Barkes, a production artist at Logo-7, stated in his declaration that “Logo-7 often would create graphic designs for each of the Member Clubs ... [and] then submit these designs to NFLP for approval.” (Barkes Deсl.
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 thе DAWG POUND mark in commerce, no reasonable jury could find that HP was the senior user. 11 Because I hold that the Browns/NFLP’s licensing of the mark was sufficient as a matter of law to establish priority of use, it is unnecessary to reach the issue — addressed in the briefs — that use of “Dawg Pound” by the public before HP ever used the mark could inure to the benefit of the Browns and NFLP. 12
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 Tab
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.
CONCLUSION
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 conferеnce on February 24, 2006, at 11:30 a.m., in courtroom 11A of the United States Courthouse, 500 Pearl Street, New York, New York.
SO ORDERED.
Notes
. For purposes of this opinion, the "Browns” will be used interchangeably to refer to defendant Cleveland Browns Football Company LLC and the football team that it operates, unless otherwise necessary for purposes of clarity.
. As further explained below, HP alleges that it first used the mark in commerce in early 1994.
. The parties represent that HP’s application is in suspension, pending the outcome of this litigation. (HP Rule 56.1 Statement ¶ 14). In 1995 and 1996, respectively, HP registered the marks TOP DAWG and LIL DAWG POUND with the PTO in applications that were unopposed. (Shepherd Deck ¶¶ 7-8).
. The Cleveland Browns website advertises "Dawg Pound” seating and refers to "Dawg Pound” as "[o]ne of the most famous trademarks in sports.” http://www.cleveland browns.com/stadiuxn/ seating/dp_ seating.php (last visited February 9, 2006).
. On Februaiy 8, 2005, the Court bifurcatеd the case into liability and damages phases and ordered discovery to proceed as to liability only.
. That use by a licensee can establish trademark rights for the licensor is contemplated by the Lanham Act, which provides, in pertinent part:
Where a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant or applicant for registration, and such use shall not affect the validity of such mark or its registration, provided such mark is not used in such manner as to deceive the public. If first use of a mark by a person is controlled by the registrant or applicant for registration of the mark with respect to the nature and quality of the goods or services, such first use shall inure to the benefit of the registrant or applicant, as the case may be.
15 U.S.C. § 1055. Thus, the Lanham Act contemрlates allowing applicants to register marks based on controlled use by another.
. HP claims that it first "adopted” the mark in 1991 (HP Opp. Br. at 1), but also states in its brief that when it attempted to register the DAWG POUND mark in March 1994, it alleged a date of first use of March 1, 1994. (HP Opp. Br. at 1). In its Rule 56.1 statement of undisputed facts, HP alleges a date of first use of March 8, 1994. (HP Amended Rule 56.1 Statement ¶ 12). In a declaration, Shepherd states that the "Date [of] First Shipment” was August 6, 1994. (Shepherd Deсl. ¶ 5). The Court accepts for purposes of this motion that HP's date of first use was some time in March 1994, because, as explained above, it is the date of first use in commerce that controls. The Court notes that HP appears to make no claim of priority of use before 1994. (See HP Opp. Br. at 10) (referring to "HP's claim of priority from and after 1994”), In any event, even if HP did claim a date of first use of 1991, the result would be no different because, as exрlained above, the Browns and NFLP licensed the mark for use on t-shirts and Christmas cards as early as 1989.
. One such licensing agreement provided, in part, as follows:
Quality Control/Product Approval Forms
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 аny 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).
. The Barkes declaration references a logo containing thе phrase "Dawg Pound” that was first used on April 21, 1989.
. HP contends that the mere fact that the phrase "Dawg Pound” appeared in some form on officially-licensed NFL merchandise related to the Browns does not establish that it was used as a mark. (HP Br. at 14-15). But the Lanham Act specifically provides that "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. § 1127 (emphasis added). Moreover, the phrase was used on the products in question — t-shirts, posters, Christmas cards, etc.— to identify the goods as products associated with the Cleveland Browns and the NFL.
. I note that courts and commentators have recognized the principle that use
only
by the public — even absent actual use by the claimant — can be considered use by the claimant and inure to its benefit.
See, e.g., Nat'l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc.