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Big Money at Stake Over "12th Man" Trademark in Football

February 13, 2014,

football.jpgOrange County - Lately, it has been hard to miss the reigning Superbowl Champion Seattle Seahawks' "12th Man" signs, banners and cheers across TV, the internet, and social media. Popular as it may be, the term famously associated with the Seahawks was originally coined by the student body of Texas A&M University, with the school going so far as to federally register the "12th Man" trademark in 1990. Now, with the Seahawk's recent success and accompanying use of the phrase, licensing negotiations between the athletic organizations are heating up.

According to longstanding Texas A&M history, the term "12th Man" came about in 1922 when head football coach Dana X. Bible called an A&M basketball player, E. King Gill, out of the stands to suit up to play. Though Gill never ended up playing a single down for the Aggies, his story carried on for years as from that point on, the student body has referred to themselves as the "12th Man" on the field.

By the early 2000s, when Seattle Seahawks fans regularly began referring to themselves as the 12th Man, Texas A&M took note. In 2006, the university commenced a lawsuit against the Seahawks for trademark infringement. The teams ended up settling, with the Seahawks paying a $100,000 lump sum to Texas A&M for its use of the trademark, along with a five year license, renewable for an additional five year term, at a fee of $5000 per year. That deal included a variety of limitations, including a geographical restraint that prevents the Seahawks from using the term anywhere outside of Alaska, Hawaii, Idaho, Montana, Oregon, Utah and Washington.

With the deal ending in 2016, several reports are indicating that the Seahawks are already in talks with Texas A&M to ensure extension of the license. Since the original agreement was made before the takeoff of social media, where much of the 12th Man frenzy has taken place, it is unclear how the teams will work out the problem of geography. While Texas A&M has demonstrated its dedication to keeping the trademark in effect in Texas and its surrounding areas, it may be facing a problem of enforceability now that the Seattle 12th man has become so popular.

Additionally, given the current contract's provision prohibiting the Seahawks from using the 12th Man on fan merchandise, if Seattle wishes to really cash in from the 12th Man retail market, they are going to have to pay up. Initial chatter surrounding the settlement discussions put the license renegotiation fee in the six figure range.

Apple Trademark Dispute May Halt iPad Sales in China

February 10, 2012,

touchscreen.jpgOrange County - Apple's great expansion into China has been marred by a trademark infringement lawsuit brought about by Proview Technology over use of the name "iPad." Most recently, the Shenzhen subsidiary of the Hong-Kong-based company has filed for a permanent injunction to ban Apple from selling its iPads in China altogether.

The Chinese market, known for its rampant intellectual property infringement, is now shamelessly producing a clone to the iPad called iPed. Typically, this type of infringement from the Chinese companies would result in a trademark infringement lawsuit mounted by the U.S. company whose trademark is being infringed. Things have changed now, and unfortunately for Apple, it may potentially be blacklisted from China's growing consumer market.

With its economic landscape rapidly changing, and its middle and upper classes growing, China has created a huge fervor from foreign companies, eager to break into its market. For example, Embraer, a Brazilian private jet manufacturer, recently donated a $30 million private jet to Hong Kong actor Jackie Chan in exchange for his valuable endorsement.

In 2000, Proview Technologies, which provides LED lighting solutions, filed to trademark both the term "iPad" and "IPAD" in China, as its Taiwanese subsidiary had sold its trademark rights for $55,000 to the UK-based rights company, IP Application Development. In September 2010, Apple began selling the iPad tablet in China with the understanding that it had acquired the trademark rights to the "iPad" name from IP Application.

Proview filed its trademark infringement complaint the following year, seeking 240 million Yuan ($38 million USD) in damages from Apple's use of "iPad." Apple responded with a counterclaim, however it was dismissed by a Chinese court. According to the 2011 court ruling in favor of Proview Technologies, although Apple had purchased trademark rights to "iPad" from the UK company, the rights in the contract did not extend to its use in China.

Proview has also filed trademark infringement complaints in two other Chinese cities and is suing several retailers for selling the "iPad" tablet. Unlike high profile litigation in the United States which can go on for years, rulings in Chinese courts are often concluded in a matter of months. Near bankruptcy after its efforts to banish the Apple iPad from China, this verdict couldn't come at a better time for Proview.