A Terrible Towel Trademark Tale

Two years ago, with the Pittsburgh Steelers on the cusp of winning their sixth Super Bowl title, I mused in this blog post about the validity of trademark registrations in the iconic Terrible Towel.  My takeaway:  There are substantial reasons to doubt the marks’ validity, even if it is extremely unlikely that anyone would raise a validity challenge.

Has the time come for such a challenge?  Today, with the Pittsburgh Steelers on the losing end of a bid for a seventh Super Bowl title, I learned that lawyers representing the marks’ owner, the Allegheny Valley School (near Pittsburgh), have sent a cease and desist letter to the developer and distributor of a Terrible Towel “app” for the Android mobile operating system.  More below the jump.

Here’s a link to the app.  It appears to be an image of a Terrible Towel that you can “wave” by waving the phone over your head. 

And here is the text of the letter, which is posted on the app distribution page.  The key accusation, it seems to me, is that the app is “in the format” of the Terrible Towel:

BRUCKER SCHNEIDER & PORTER
ATTORNEYS AT LAW

Main Office:
SUITE 320, WEYMAN PLAZA
300 WEYMAN ROAD
PITTSBURGH, PA 15236

Pittsburgh Office:
Suite 200 Koppers Building
436 Seventh Avenue
Pittsburgh, PA 15219

North Hills Office:
1007 Mt. Royal Boulevard
Second Floor
Pittsburgh, PA 15223

February 4, 2011

Appolicious
Re: “Terrible Towel App”
To Whom It May Concern:

I represent AVS Foundation (“Foundation”) the owner of the trademarks “The Terrible Towel®”, “Myron Cope’s Official The Terrible Towel®”, and “The Terrible™. I have been informed that you are making, offering for sale and selling “Terrible Towel APP” that is in the format of the Terrible Towel.

This app is in the distinctive font and format of “Myron Cope’s Official The Terrible Towel®.

Due to thirty years of use in connection with Pittsburgh Steelers related products, their visibility to fans viewing Pittsburgh Steelers football games in person or on television, in Pittsburgh and other cities, their distribution through numerous channels of commerce and the stature of Myron Cope, who had the idea of “The Terrible Towel®” my client’s trademarks have become well known throughout the United States and the world, with my client being the source of the goods, and my client has generated substantial good will and strong property rights in the trademarks. AVS Foundation’s property rights are stronger due to state and federal trademark registrations and common law use.

Anyone seeing the terms “The Terrible Towel®”, “Myron Cope’s Official The Terrible Towel®”, and “The Terrible™” or terms confusingly similar thereto will believe that the items on which the terms appear come from an authorized source or have approval of the trademarks’ owner.

As a result of your actions, there is a likelihood of confusion on the part of the relevant purchasing public, you have infringed upon my client’s trademark and unfairly competed against the AVS Foundation under the Lanham Act, state statutes and common law. As a result, my client is entitled to an injunction, profits, damages and destruction of existing “Terrible Towel Apps”.

You can avoid litigation over your clear violations of the law by agreeing: to stop advertising, offering for sale and selling “Terrible Towel Apps”; to destroy any existing “Terrible Towel Apps”; to turn over to AVS Foundation all codes, programs and other means of making the “Terrible Towel Apps”; to account to AVS Foundation for all sales of the “Terrible Towel Apps” within ten days of this letter, and to disgorge all profits from the sale of the “Terrible Towel Apps” within ten days of this letter. You can so agree by signing on the line provided below and returning the signed letter to me so that I receive it by February 14, 2011. Your continuing infringement after your receipt of this letter will constitute willful infringement and entitle my client to enhanced damages and attorneys’ fees.

Sincerely,

Bernard M. Schneider