Dallas Cowboys Had Rights to "America's Team" Nickname

by Thomas Long, Legal Editor, CCH Trademark Law Guide

   The Dallas Cowboys professional football team and the marketing arm of the National Football League have been granted a permanent injunction barring an apparel seller from using the mark "America's Team." According to the federal district court in Dallas, the apparel seller's use of the mark infringed and diluted the Cowboys' prior common-law rights in the phrase. The court also canceled the apparel seller's federal registration for its "America's Team" mark.

Likelihood of Confusion

   The Cowboys established priority in the "America's Team" mark by demonstrating use of the nickname on products since 1979. The apparel seller's federal registration --which had been issued to a predecessor in interest in 1991 and was assigned to the seller in 1998 --did not cut off the Cowboys' pre-existing common-law rights, according to the court. Between 1979 and 1991, the Cowboys used the mark in connection with, at a minimum, a video, a calendar, and a set of coins.

   The parties' marks were strikingly similar, in the court's view. Although the Cowboys' use of the mark included a star logo and the words "Dallas Cowboys," both marks contained the identical wording, "America's Team." Both parties sold baseball caps and other apparel bearing the phrase. There was some overlap between the parties' marketing channels, in that both sold products via the Internet.

   The apparel seller adopted its "America's Team" mark with deceptive intent, according to the court. The seller intended to derive benefit from the reputation of the Cowboys.

   Six months after obtaining a federal registration in the "America's Team" mark, the seller attempted to license the mark to the Cowboys. In 1999, the seller attempted to auction the mark for a minimum bid of $500,000. In 2003, the seller again offered to transfer the mark to the Cowboys for $400,000. The seller was, effectively, "squatting," in an attempt to cash in on the notoriety of the Cowboys.

Dilution

   The apparel seller's use of the mark was likely to dilute the Cowboys' mark, in violation of federal and Texas law, the court said. The Cowboys established the mark's fame through long-term use over a wide geographic area. A survey demonstrated recognition among the relevant consumer base. In addition, in its own marketing efforts, the seller had declared the mark to be famous.

   The seller's placement of the mark on such items as a baseball cap and in handing out its annual "America's Team Award" adorned with stars blurred the uniqueness and individuality of the Cowboys' mark, according to the court. In addition, the inferior quality of the seller's products could tarnish the reputation of the Cowboys' mark.

Dallas Cowboys Football Club, Ltd., ND Tex., ¶61,443.

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