EDITORIAL NOTE: Long time readers of IPWatchdog.com will remember Beth Hutchens. Between September 2010 and April 2013, Beth wrote a month for us. Other commitments took her away for a while, but now she is back. We look forward to publishing more of her entertaining, witty and informative writings in the months to come. Welcome back Beth!
I was never terribly “into” football. I didn’t hate the sport or anything, I just never really cared enough about it to have an opinion either way. Then I moved to Seattle and everything changed. I now live squarely in “12th Man territory,” and I can assure you, Seahawks’ football is no joke. If its football season and you are not wearing blue and green at brunch, you’re not quite a pariah, but you’re definitely a weirdo.
I am admittedly a “newbie” to the whole football thing, and though I’m still learning, I’ve spent the last few Sundays with nine of my closest friends yelling and cheering like a mad fool while stopping intermittently to ask questions that I can only assume range from completely stupid to slightly annoying (did I mention that my nearest and dearest are also very patient?). Knowing that I am an intellectual property attorney, every time there is something that even smells like an issue (which is often because, hey — it’s the NFL), they ask me about it, and I am more than happy to discuss it. They learn intellectual property, I understand the difference between a punt and a kick, and everybody’s happy.
Recently, after teaching me about the onside kick, one of the nearest and dearest remarked, “Hey Beth, did you know that Texas A&M owns “12th Man,” and not the Seahawks?”
“Yeah. But Seattle is, like, ALL 12th Man and everybody knows it. How does that work?”
So with many thanks to my friend for the idea, permit me to ‘splain the 12th Man trademark.
While it may be common knowledge that Texas A&M (“TAMU”) owns the mark, what may not be so clear is how and why this came about. Most people know that the 12th Man, as a concept, refers to a football team’s fans. There are 11 players on the field with the extra, or twelfth “player” being in the stands. Let’s talk a little history for a minute. For the record, I am not a sports historian, but it is kind of a cool story. Very briefly, in 1922, TAMU’s beloved Aggies were struggling against the dreaded Centre College. It was a dramatic game fraught with injury to the point that the Aggies wouldn’t have enough players if one more person got hurt. The coach recruited a young man from the stands and told him to suit up. The young man did not play, but stood by ready to jump in if he was needed, thus becoming the 12th player for the team. The Aggies went on to win the day with that remarkable “12th Man” standing on the sidelines. Aggie fans have called themselves the 12th Man ever since. Eventually, though, other teams began using the term to refer to their own fans, both at the collegiate and professional level, and the phrase is now commonly defined as a term for any fan of an American football team.
Tabling the generic or descriptive arguments for just a bit, we need to talk about what happened next. The answer is nothing much until the 1980’s and 1990’s when TAMU applied for, and received, a series of federal registrations for the 12th MAN trademark. Shortly thereafter, it began enforcing its mark by sending cease and desist letters to teams who were using it without permission. Most teams complied. Then, in 2005, when the Seahawks started to gain some national attention, TAMU requested that the team stop using “12th MAN.” The Seahawks did not comply. Hilarity ensued, litigation followed, a settlement occurred shortly thereafter, and the 12th Man licensing agreement was born.
As an aside, while TAMU has arguably been using the term “12th Man” since that fateful day in 1922, one may argue that the term has become merely descriptive or even generic at this point thanks to social media. The license was negotiated when Twitter wasn’t even a thing yet, and recent events have certainly shown that Seattle fans, if anything else, show their team lots of love online. If one fires up the ol’ Google Machine, it is common to see several different references to the term, including a Wikipedia page, that use the term generically to refer to football fans. In other circumstances, then, couldn’t one argue that the marks are no longer valid? In other circumstances, sure, but even if the marks weren’t incontestable (they are), and even if someone somewhere somehow could successfully argue that the mark no longer has any source indicating power, Seattle can’t and won’t. The settlement agreement and resultant license forbids it from making any kind of validity challenge to the mark. So there you have it. Let’s move on.
As part of the settlement agreement, Seattle can use the number 12, and whatever rendition of 12 it wishes, so long as it sufficiently distinguishes whatever mark it comes up with from “12th MAN”. They can use “12th MAN” in advertising and promotional items provided proper notice is used but they may not, however, use “12th MAN” on merchandise, including the flag. Ever notice that the “12th Man Flag” at CenturyLink Field is just the number 12? Now you know why. The Seahawks can refer to it as the “12th Man” flag, but can’t put the word “man” anywhere near the number 12. The agreement also requires Seattle to cooperate with TAMU’s enforcement rights against alleged infringers. The license term is set to expire in 2016, which means that, unless something happens, Seattle will no longer be permitted to use “12th Man” or any phonetically equivalent rendition whatsoever (which may or may not include the word “fan”, but that is another argument for another day).
Impending expiration notwithstanding, I’d be surprised if renewal negotiations aren’t already taking place. TAMU can ask for a bit more money, Seattle can pay up, and we can all return to our regularly scheduled programming. But what would happen if neither TAMU nor Seattle want to (hyuk hyuk) play ball? That would mean that Seahawks could no longer use “12th Man,” but I’m not sure that would be a catastrophe. Seattle fans may refer to themselves as the 12th man, but they rather frequently simply say “The 12’s” or “We are 12” (insert Borg joke here). While I doubt the casual observer would even notice – much less care about – the distinction of “12” versus “12th MAN,” it’s an important distinction as far as the license goes. For what it’s worth, I smell a rebrand and a slow shift to getting rid of the use of 12th MAN entirely. Currently, Football Northwest (the company who owns the Seahawks’ IP) has several pending trademark applications for “12’s,” “We are 12,” “The 12’s,” and other 12-type concepts. It also currently owns the stylized mark “12.” Is it too much of a stretch to think that part of the strategy will be to politely decline to relicense “12th MAN” and move toward something else? The Seahawks don’t have to raise the “12th Man” flag, they can simply call it the “12 Flag” or the “We Are 12,” or any other flavor of 12 that doesn’t use the word “man.” Granted, the 12th man “thing” is important to the Seahawks franchise and its fans, but is it really THAT important?
While I would like to predict that 2016 will show us something a bit more exciting than an amicably negotiated license and a quiet rebranding protocol, my Magic 8 Ball won’t let me. But then again, we’ve all seen the tragic results of my Magic 8 Ball’s predictions, and after that fake field goal touchdown against the Packers, I’ve seen enough Seahawks football to know that anything can happen.
Join the Discussion
11 comments so far.
Andrew LopataFebruary 28, 2015 04:20 am
Thanks for your reply.
Regarding my first point, a mark is always subject to attack based on it being (or having become) generic, incontestability status or not. See Lanham Act § 14(3), 15(4) and the definition of “Abandonment” under § 45. Regarding descriptive uses: If someone uses the mark in a descriptive sense, e.g., selling t-shirts that say “I am the 12th Man,” they would have a pretty solid descriptive fair use defense (unless they use distinctive trade dress, like color combinations). See Lanham Act § 33(b)(4) and K.P. Permanent Makeup 543 U.S. 111 (2004).
My second point has to do with how trademark law has really gotten too far from its original purpose of being a source identifier to reduce consumer transaction costs and prevent deceptive practices that harm consumers. Marks are supposed to serve the dual function of reducing consumer confusion and acting as a symbol for the goodwill consumers have developed for the producer of a given product. Now marks are sold as the goods themselves and there is really no good reason for the law to help mark owners extract payments for uses that don’t serve the original purposes of trademark law. Anti-dilution laws are an example of the way trademark law has developed to protect the owners of mostly very strong brands. None of these extension of trademark law benefit the public. To the contrary, they tend to harm competition and have a chilling effect on free expression. This is all better expressed in the academic literature like Jessica Litman’s wonderful “Breakfast with Batman”: http://www.msen.com/~litman/breakfast.pdf
Regarding the third point: Texas A&M has a registration for the word mark, “12th Man.” It has allowed the Seahawks to use certain terms like “12,” while forbidding the use of the term “12th Man” and forbidding the Seahawks to challenge their mark “12th Man.” I have read most of the licensing agreement, and I think it is better characterized as a concurrent use agreement rather than a licensing agreement. In any case, the Seahawks have applied for a number of word marks including “The 12s.” See the USPTO’s approval of that application here: http://goo.gl/ktDXEO This application does not challenge Texas A&M’s mark “12th Man.” Even if Texas A&M opposes the Seahawk’s “The 12s” application or the other 12-like word mark applications the Seahawks have filed, I don’t think the Seahawks are violating the no-challenge provision as long as they don’t counterclaim to cancel Texas A&M’s mark.
Beth HutchensFebruary 27, 2015 03:58 pm
Thanks for your thoughts!
I think at this point we’d be hard-pressed to find anyone who wouldn’t think use of the term is descriptive, perhaps even generic at this point. I didn’t read the prosecution history of A&M’s registration, so I don’t know if this was addressed back then. But if someone were to try to register it now I think they would have a difficult time with it. But it really doesn’t matter at this point. The mark is what it is and is being enforced how it is so…meh.
As to your second point, I’m not sure I understand your meaning when you say “a symbol for source identification”. The consumer may or may not care about the quality of the goods, but the mark owner certainly does (and must for at least the purposes of blurring and dilution). It seems as though you are making a sort of moral rights argument. Can you clarify for us?
For your third point, I haven’t crawled through TESS to see what type of mark the Seahawks have requested, but I’d be willing to bet that all are stylized as opposed to standard character. This isn’t a challenge to the validity of A&M’s mark- it’s actually moving away from using it at all. Either way, a direct challenge (for example some sort of TTAB proceeding) is forbidden under the license, and even if it weren’t, the mark is incontestable, so it’s probably not worth the effort.
Andrew LopataFebruary 27, 2015 03:12 pm
First, I think the term “12th Man” is generic and/or just about every use of it would qualify as a descriptive fair use.
Second, I know my views are a minority position, but: the mark should merely be a symbol for source identification. If the primary purpose people are buying a product is for the mark itself (i.e., the mark is the product), those products should not receive trademark protection. No one particularly cares about the quality of the t-shirt or cap or mug with “12th Man” on it. Consumers want the product because it says “12th Man,” and don’t really care about the source of the goods. I understand the whole sponsorship confusion argument, but there is no reason why consumers should have to pay to give a mark owner free advertising, except that we think mark owners somehow deserve that money. It certainly doesn’t help consumers, which is what trademarks should be about.
Third, the Seahawks have applied to register various 12-like terms as trademarks with the USPTO, including “12,” “We are 12,” and “The 12s.” See: http://www.abajournal.com/news/article/seattle_seahawks_attempting_to_trademark_the_number_12_the_word_boom This way, they are not directly challenging the validity of Texas A&M’s mark or registration. Should be interesting to see how that pans out.
Finally, a good but unintentional byproduct of this whole controversy is: the way the Seahawks have agreed to use “12” are gender neutral, bringing women into the fan-fold.
Beth HutchensFebruary 3, 2015 09:36 pm
Woof. There is no joy in Mudville but, on that, baseball season is right around the corner! Yay baseball!
AnonFebruary 1, 2015 10:08 pm
Ok – off by one – but did not see an interception at the goal line like that.
Beth HutchensFebruary 1, 2015 11:33 am
Ha, Anon! Wokka wokka!
Magic 8 Ball predicts that the Dodgers will triumph over the Mavericks in the 6th period with a final score of 7 baskets to 4 goals. But something about that doesn’t sound right and 8 Ball is usually full of hot air anyway (rim shot).
Enjoy the game and be safe! 🙂
AnonFebruary 1, 2015 09:09 am
What? No predictions on the game itself?
I think the Patriots prevail by 5 (if only to prove the point that “inflategate” is, um, overblown – ouch).
Then again, I had the Broncos last year blowing the doors off the Hawks, so what do I know?
Beth HutchensJanuary 31, 2015 07:04 pm
NS- yes. As Brent mentioned,and as I agree, it behooves both teams to work together on this. I think you’re right that both parties will continue to negotiate amicably and negotiations will be fruitful. Thanks for the additional information. I think it goes well to support the thought that the parties will come up with something mutually beneficial. I’d be surprised, as well, if 2016 showed us something more exciting than a continued relationship under reasonably negotiated terms. Magic 8 Ball insists there’s a rebrand in the works, but it’s track record is 0-9 so there you have it.
Beth HutchensJanuary 31, 2015 11:34 am
Thanks, Brent, and I agree with you. I considered discussing the history of the filings and perhaps addressing the first use arguments, but doing so would have just been too clunky and messed with the flow of the article. I think an interesting aspect would be to wax philosophical on whether, if it were possible, someone could challenge the mark based on the idea that it no longer contains source indicating power and no one should own it. That argument is kind of kooky and likely won’t ever see the light of day but it’s fun to think about what would happen say, if someone tried to trademark the phrase today, and what an Examiner’s response would be.
As an aside, I know TAMU gets a ton of heat for enforcing their mark, but you and I know this is misplaced. They are doing what any responsible trademark owner should do, regardless of any argument that the mark “shouldn’t be theirs”. Maybe I’ll do a follow up article for next years’ Big Game Football Contest. Magic 8 Ball still predicts a rebrand.
NSJanuary 30, 2015 06:24 pm
Interesting analysis, though I’d be very surprised if the 2016 negotiations faltered. A&M has shown no inclination over the years to monetize its “12TH MAN” trademark beyond the Aggies fan base. The deal struck with the Seahawks in 2006 was designed to cover their costs, that’s it. A&M struck a similar deal with the Bills in 2014, and as much publicly stated this policy in 2014 as well. Informative articles:
Brent ReynoldsJanuary 29, 2015 02:39 pm
Great article, Beth. An Aggie here, and I looked at this pretty closely in 2006.
I think that looking at the trademark filings by A&M shows why the agreement with Seattle Seahawks exists in the form that it does.
In the first trademark filing in 1990, the Goods and Services identified on the filing were limited to merchandise likes hats, uniforms, etc.
The next filing in 1996 listed entertainment services as the Goods and Services covered, but the services identified reads: “entertainment services, namely organizing and conducting intercollegiate sporting events.”
A filing in 2007 expanded the Goods and Services identified more broadly, listing a number of sports, and not mentioning intercollegiate events specifically.
If you take this chronology into account, along with the Seahawks temporary use of the term in the early 1980s, the Seahawks may have had a plausible challenge to the trademark in the use of NFL games.
However, the Seahawk’s didn’t really use the term between 1988 and 2003. Nor did they challenge A&M’s filings in the 1990s. In 2003, the Seahawks started relating to their fans with a number 12 flag. This flag did not have the phrase “12th Man” on it, but was generally referred to as the 12th Man flag by broadcasters and such. The lawsuit between A&M and the Seahawks was filed when the Seahawks installed a billboard inside the stadium that read “Home of the 12th Man” in 2006, which was clearly use of the term, and started selling T-Shirts that used the “12th Man” term, which was clearly in violation of the 1990’s trademark on merchandise.
If you step back and look at the filings and the history of the use of the term, there are some real issues to argue about in a dispute between Seattle and the Aggies on the use of the term in professional sports. However, it benefits both organizations to limit the use of the term to other teams in football.
It will be interesting to watch the saga continue as the term through 2016 comes closer to expiration.