Successful Brand Protection: Who Really Owns the “12TH MAN” Mark?

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With the recent Seattle Seahawks Super Bowl win, mention of the “12th Man” has been in the news for a number of weeks. Surprisingly, Seattle does not have ownership of this mark. The actual owner, Texas A&M University, has been very aggressive in policing its mark.

Texas A&M registered the marks “12TH MAN” and “HOME OF THE 12TH MAN” in 1990. Various registrations for these marks in other product categories have followed since.

The school’s website claims that the tradition of referring to fans at football games as the “12th Man” began on Jan. 2, 1922. During a home football game, the team was struggling and had been forced to go through all its reserve players. The coach asked E. King Gill, a former football player that had decided to play basketball, to leave the stands and suit up for the team in case he was needed. He never played in the game, but he was the only player remaining on the sideline when A&M finally won the game.

Seattle also claims to have a long history of association with the number “12” and the phrase the “12th Man.” The team alleges to have started using the term “12th Man” shortly after its creation in 1976. On Dec. 15, 1984, jersey #12 was retired in honor of the fans. A flag meant to honor the “12th Man” was first hoisted on Oct. 12, 2003 by 12 original season ticket holders and continues to be raised before every home game.

A&M started sending cease and desist letters to the Seahawks in 2004, but the team refused to stop using the marks. A&M responded by filing a lawsuit immediately before Seattle was set to take on Pittsburgh in Super Bowl XL. It requested a temporary restraining order and permanent injunction based on dilution of the marks when viewed by large Super Bowl audiences that would likely associate the marks with Seattle and not the actual owner. (The case, originally filed in Brazos County, Texas was removed to federal court so the injunction was not issued.)

Seattle is the only team that A&M has actually filed a lawsuit against. The parties quickly reached a settlement in the case and a licensing agreement was signed 6 months later in July 2006. Under the agreement, Seattle agreed to pay A&M a lump sum of $100,000 and $5,000 per year for a term of 5 years. It included a renewal option which was exercised in 2011, extending the agreement to 2016.

Under the licensing agreement, Seattle is not allowed to attack A&M’s ownership of the marks, sell any merchandise with the term “12TH MAN,” encourage media outlets to use the term, use the term along with the color maroon or any other shades of red, establish or endorse any organization that uses “12th Man” in its name, fly a flag with the term, use the term “12TH MANIA” in any way or apply for registration of the marks. Seattle is also required to submit samples of all goods and services containing the mark before they can promote them in order to ensure quality.

The royalty amount paid to A&M is subject to renegotiation after the end of the first renewal period. The availability of new forms of social media and the success of the Seahawks are likely to affect these negotiations in 2016. Currently the “12TH MAN” as associated with Seattle has 1.5 million likes on Facebook and 431,000 followers on Twitter. Value in these marks continues to grow, based both on the actions of the actual owner and the licensee.

A&M is extremely active in policing its brand and typically relies upon the effectiveness of cease and desist letters. Over the years, letters have been sent to many teams including the Buffalo Bills, Chicago Bears and Denver Broncos, all of which stopped using the mark(s).

These marks are also common in other sports. European and South American soccer clubs are known for retiring #12 in honor of their fans. And RFK Stadium, home of DC United, has a sign that says “Home of the 12th Man.” (DC United has received cease and desist letters from A&M but claims that they only have a single sign and in no way engage in commercial use.)

A&M has also been successful in deterring use of their marks in other industries. Recently, Foggy Noggin Brewing, a small brewery 20 miles northeast of Seattle, planned on selling “12th Man Skittles IPA” on the Saturday before the Super Bowl. The brewery is only open from 12-4 on Saturdays and only made 5.6 gallons of the beer. However, a cease and desist letter from A&M encouraged them to change the name of the beer. The brewery opted for “Cease and Desist IPA” in order to avoid any potential legal complications. A&M does not own the mark when associated with beer and would have had a difficult time proving likelihood of confusion for consumers if this case had gone to trial.

In 2012 and 2013, A&M sent out 460 cease and desist letters for other marks that it owns. The school is a prime example of how to effectively police uses of registered trademarks in order to avoid dilution of its brand. Until it comes across a company that is willing to wage an expensive legal battle, it is likely to stop usage of its marks in industries and categories it cannot legally control as well as those it can.

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