The District Court of the Western District of Pennsylvania recently granted summary judgment in favor of the Pittsburgh Steelers of the National Football League regarding a lawsuit for trademark infringement of the “Terrible Towel” trademark. Beginning in 1975, at the initiation of radio broadcaster Myron Cope, fans of the Steelers have waved yellow and black colored rally towels depicting the words “Terrible Towel” as way to show support for the team during games. These towels have gained substantial public recognition due to the Steelers’ recent Super Bowl victory in 2008, thus making Steelers merchandise a top seller.
Non-profit organization Allegheny Valley School Foundation (“AVS”) is the owner of a federal trademark registration for the phrase “Terrible Towel” for use on goods such as T-Shirts, which has been in continuous use for over two decades. The Steelers are the exclusive licensee of this mark, which provides them the right to sell merchandise with the “Terrible Towel” mark.
The trademark infringement lawsuit was initiated due to the Defendant, Eugene Berry Enterprise’s, sale of T-shirts bearing the phrase “The Terrible T-Shirt a Pittsburgh Original” in black and gold coloring. The Defendant filed a federal trademark application with the United States Patent and Trademark Office (“USPTO”) in May of 2011 to register the “Terrible T-Shirt” phrase as a trademark for use on T-Shirts. After refusing to withdraw the application, Defendants placed orders for T-Shirts with the “Terrible T-Shirt” design printed in black and gold. Eugene Berry allegedly gave employees of National Retail Graphics a letter from AVS purporting to give permission to Eugene Berry Enterprises to sell the T-Shirts.
Under Federal law, in order to be successful in a federal trademark infringement lawsuit, the Plaintiff must prove the following elements: 1) the trademark in question is valid and legally protectable; 2) plaintiff owns the trademark in question; and 3) the defendant’s use of the Plaintiff’s mark in interstate commerce is likely to cause consumer confusion. The third prong, likelihood of consumer confusion, is determined by an application of several detailed factors.
District Court Judge Arthur J. Schwab found that the phrase “Terrible Towel” is legally protectable because it is not a descriptive term. Judge Schwab instead compared its trademark value to marks such as Kodak and Lifesavers, which are highly distinctive marks, thus indicating a high level of legal protection. Schwab emphasized the strength of “Terrible Towel” mark due to its highly visible use in sports television broadcasts and media articles, which has caused consumers to identify the towels with the City of Pittsburgh and the Steelers franchise. Judge Schwab bolstered his conclusion that the “Terrible Towel” mark is famous due to the fact that towels bearing the mark have been taken into space and waved on the top of Mount Everest.
Judge Schwab further noted that the phrases and coloring of Defendant’s T-Shirts were similar to Plaintiff’s goods using its mark. Judge Schwab concluded by finding that Defendant’s T-Shirts were likely to confuse consumers into believing that the T-Shirts were official Steelers merchandise or otherwise sponsored by the Steelers, especially due to the fact that Defendant specifically marketed his T-Shirts to Steelers fans.
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