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Tag Archives: NFL

Former NFL player’s trademark ruled not famous in lawsuit concerning “The Biggest Loser” show

Recently, former NFL player, LeCharles Bentley’s claim for trademark dilution was dismissed in a lawsuit that he brought against NBC, among other defendants.[1] This dispute revolves around Plaintiffs’ allegations that the Defendants are infringing upon the trademark LB by using a similar logo in connection with the reality television show, “The Biggest Loser.”[2] This case was originally filed in Ohio but then was transferred to the Central District Court of California.[3] The defendants then moved to dismiss Plaintiffs’ causes of action for trademark dilution and infringement.[4]

In order to support a claim for trademark dilution, Plaintiffs would need to allege that the marks are distinctive and famous.[5] The Court noted that the Plaintiffs alleged two different versions of the LB mark in their Complaint, namely a black and white version and a red version, and applied a presumption that such marks were distinctive.[6] The Court then found that, despite the presumption of distinctiveness, the LB marks were descriptive because they were comprised of Plaintiff, LeCharles Bentley’s initials.[7] This finding of descriptiveness put the burden on the Plaintiffs to show that the marks obtained enough consumer recognition to satisfy the requirement of secondary meaning.[8] The Plaintiffs alleged that their LB marks are well known in the sports performance industry as a result of Plaintiffs’ use of the mark in commerce for several years, which the Court found to be sufficient to establish that the marks were distinctive.[9] However, distinctiveness of a mark alone is not sufficient to support a trademark dilution claim as more is required to show that the mark is famous.[10]

Since trademark dilution claims are meant only for a select class of marks that are considered famous, the test to determine fame is difficult to meet.[11] The Court delineated a four factor test to determine fame, namely 1) the duration, extent and geographic reach of advertising of the mark; 2) the amount, volume and geographic extent of sales of goods and/or services offered under the mark; 3) the extent of actual recognition of the mark; and 4) whether the mark is registered.[12] Marks that are considered famous are usually those that are widely recognized by the general public, and whose fame is recognized in more than just niche markets.[13] The Court provided examples of marks that could be considered famous, namely BUDWEISER, CAMEL, and BARBIE.[14] In this case, it was determined that the Plaintiffs’ marks were not sufficiently famous, as the Plaintiffs could only show that their marks were recognized among a limited segment of individuals, namely those interested in “football, sports performance, and fitness training.”[15]

The results of this case show that not every trademark can be considered famous, even if federally registered. It is common practice for parties involved in litigation matters to allege that their trademarks are famous. However, the amount of trademarks that will end up being considered famous is limited. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Shareholder

[1] See, LeCharles Bentley, et. al. v. NBC Universal, LLC, et. al., No. 16-cv-03693 TJH (KSx) at Docket Entry No. 63 (C.D. Cal. Sept. 28, 2016).
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] Id.
[11] Id.
[12] Id.
[13] Id.
[14] Id.
[15] Id.

NFL prevails in dispute regarding 2014 suspension of Adrian Peterson

Recently, the United States Court of Appeals for the Eighth Circuit ruled in favor of the National Football League (“NFL”) regarding the suspension of star running back Adrian Peterson, of the Minnesota Vikings.[1] The appeal resulted out of a suspension handed to Adrian Peterson during the 2014 NFL season by NFL commissioner Roger Goodell.[2] Peterson was suspended by the NFL indefinitely after Peterson entered a plea of nolo contendere in response to a criminal charge of misdemeanor reckless assault of one of his children.[3] Peterson subsequently appealed the suspension to an arbitrator who upheld the NFL’s decision and the fines imposed by the NFL.[4] Peterson then petitioned to the district court, which decided to vacate the arbitration decision and the fines.[5] The NFL appealed the district court’s decision and reinstated Peterson, who is currently eligible to play in the NFL.[6] The remaining issue in the instant appeal revolves around whether the NFL is entitled to collect the fines it imposed against Peterson, and does not relate to Peterson’s ability to continue playing in the NFL.[7]

The Eighth Circuit ruled in favor of the NFL and reversed the district court’s decision to vacate the arbitration decision and related fines against Peterson.[8] The effect of the NFL’s suspension and fine amounted to six weeks of Peterson’s salary.[9] The district court’s decision to vacate the arbitration decision was based upon the finding that Commissioner Goodell could not retroactively apply a new and enhanced disciplinary standard to Peterson.[10] The NFL Player’s Association (“NFLPA”) argued that a maximum of a two (2) game suspension was appropriate for a first-time domestic violation infraction and cited to the suspension of former NFL running back Ray Rice in support.[11] However, the Eighth Circuit disagreed noting that the arbitration decision had sufficiently shown that in regards to the Peterson suspension Commissioner Goodell had discretion to impose a six (6) game suspension and fine if he had concluded that previous shorter suspensions were inadequate.[12] The Eighth Circuit further stated that the Commissioner is “not forever bound to historical precedent if prior discipline . . . provided insufficient deterrence.”[13] As a result, the Eighth Circuit upheld the arbitration’s decision which found that Commissioner Goodell acted within his authority and did not change previous policies.[14] In making its decision to uphold the arbitration decision the Eighth Circuit noted that the Court’s role in such cases is limited and that the Court would not “apply its own view of what would be appropriate player discipline.”[15] The result of this ruling is that Peterson will have to pay the fines imposed, but can continue playing in the NFL.

This ruling appears to be a victory for the NFL and an affirmation of the Commissioner’s discretionary power. However, the dispute may not be entirely over as the NFLPA can choose to ask for a rehearing of the decision. We will be monitoring the status of this case. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Shareholder

[1] See, National Football League Players Association, on its own and on behalf of Adrian Peterson v. National Football League, et. al., No. 15-1438 (8th Cir. Aug. 4, 2016), available at http://media.ca8.uscourts.gov/opndir/16/08/151438P.pdf
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] Id.
[11] Id.
[12] Id.
[13] Id.
[14] Id.
[15] Id.