Here is an update to my recent post about the Pittsburgh Steelers’ Terrible Towel trademark and my questions about the validity of the mark in view of the (i) licensing relationship between the owner of the mark (the Allegheny Valley School) and the licensee of the mark (the Steelers), which appears to be entirely appropriate and conventional; and (ii) the allegations of both entities in their recent lawsuit against an accused infringer, which contend that relevant consumers affirmatively associate the mark, as an indicator of source, with the Steelers. My question was whether such positive affirmation of the source-bearing qualities of the mark is enough to trigger the “deceptiveness” language in Section 5 of the Lanham Act (on use of a mark by related entities) or otherwise to trip the wire of the “naked licensing” doctrine.
To say the least, that argument tugs at the fabric of modern trademark licensing law. Not surprisingly, it was decidedly ignored in the ruling of the district judge granting the Steelers’ motion for a preliminary injunction. Here’s the update, and it’s a dog-bites-man non-headline: The Steelers have obtained a preliminary injunction against the infringer.
But some of the language of order has me scratching my head.
On the one hand, the plaintiffs allege: Because the Terrible Towel has been associated with the Steelers for more than 35 years, the mark (the Terrible Towel) has become “widely recognized by the general consuming public as a designation of source of the goods, thus earning the status of a famous mark.”
On the other hand, Judge Schwab (a federal District Judge in the Western District of PA) concluded in his order that “the interest of the public, particularly its interest in providing residential and habilitative care to persons with intellectual and developmental disabilities is served by this court’s issuing this injunction.” I am guessing that this language was drafted by the plaintiffs’ counsel.
Consumers think that the mark and the Towels come from the Steelers and are affirmatively led to believe that they come from the Steelers by the actions of the Steelers and the mark owner, the AVS. They do come from the Steelers.
When the mark is infringed, the harm from the infringement is the arguable economic injury to the mark owner, which is AVS, and which is not just unknown to consumers, but which (as mark owner) affirmatively conceals its relationship to the mark from the consumers. At least, that last part is my inference from the allegations of the complaint.
My guess is that this is a terribly conventional outcome in trademark practice terms. If the other allegations of the complaint regarding the defendant’s behavior are true, and the judge apparently agreed that they are (the defendant apparently falsely claimed to a producer of his goods that he had a relationship with the AVS), then no one will have much sympathy for the guy, including me.
No one ever advanced his career in Pittsburgh by publicly proclaiming his impiety when it comes to the Steelers, Myron Cope, and the Terrible Towel. The Steelers are a civic religion. TTs are the closest thing that Pittsburgh has to religious relics. And the late Cope, who was Jewish (he was born Myron Kopelman), was sainted, metaphorically speaking. In the collective consciousness of the community, he is up there with Bill Mazeroski (still alive), Willie “Pops” Stargell (not), and the Chief (Art Rooney, not), all of them perhaps a half-step above Fred Rogers (also not).
In terms of community equities, then, Judge Schwab absolutely did the right thing. But the logic of the plaintiffs’ argument, in terms of the consumer-protective theory of trademark law, still bothers me.