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Ownership of “Who Dat?,” the familiar battle cry of New Orleans Saints fans, is the subject of a no-holds barred trademark battle in Louisiana.
On March 4, 2010, Who Dat?, Inc. sued NFL Properties, the New Orleans Saints, the Secretary of State of Louisiana, and the State of Louisiana, on a litany of trademark claims over its alleged “Who Dat?” trademark. Plaintiff later added five New Orleans merchants to the suit, including “Who Dat Yat Chat,” a cafe in St. Bernard Parish, Louisiana. The breadth of the complaint can only be described as an apparent exercise of what I coin, “kitchen-sink syndrome:” add as many claims and defendants as you can at the outset, and wait for the court to “unclog” the complaint.
According to the complaint, Who Dat?, Inc. owns the “Who Dat?” trademark pursuant to both state registration and federal common law. The plaintiff claims it “developed and nurtured” the “Who Dat?” trademark, and that the defendants’ use of the “trademark” in commerce constituted infringement, dilution, and other ills. Although the plaintiff claims it “nurtured” the trademark, the U.S. Patent & Trademark Office canceled Who Dat?, Inc.’s several federal trademarks, including Registration No. 1688040, for plaintiff’s apparent failure to maintain the registration. To be fair, it may be hard to adequately “nurture” a “trademark” when vigilantism, a characteristic precursor to kitchen-sink syndrome, is in control. But I presume that what the plaintiff means by “nurture” is that it issued cease-and-desist letters to allegedly “infringing” merchants.
But Who Dat?, Inc. is not the only party claiming it owns the “Who Dat?” trademark. In an apparent nod to its litigious opposing party, the NFL has been policing its alleged “trademark” by issuing cease-and-desist letters to various t-shirt makers, in an attempt to prevent other parties from using the “Who Dat?” ”trademark.” At a pretrial hearing on November 10th, the NFL changed tactics and appeared to concede that “Who Dat?” on black and gold “should be fair game.”
Despite Who Dat?, Inc.’s attempts to enforce its own federal “trademark,” a court may be reluctant to agree with the plaintiff that it owned a federal trademark, given its failure to maintain federal registration. But even if the court finds that Who Dat?, Inc., is entitled to federal common law trademark rights, Who Dat?, Inc. faces a seemingly insurmountable obstacle to make out a prima facie case of federal trademark dilution. Under Section 43(c) of the Lanham Act, the plaintiff must establish four elements: (1) its mark is famous; (2) its mark is distinctive; (3) the defendants began using the mark in commerce, after the mark became famous; and (4) defendants’ use of plaintiff’s mark is likely to cause dilution by blurring or by tarnishment of the mark.
The first element, which requires the mark to be “famous,” serves a gate-keeping function that substantially limits the number of potentially successful dilution claims. Under 15 U.S.C. Section 1125(c)(2)(A), a mark is “famous” if it is “widely recognized by the general consuming public” of the U.S. as a designation of source of the mark owner’s goods. Board of Regents, University of Texas v. KST Elec. (W.D. Tex. 2008), interpreted “famous” as requiring the mark to be a “household name.” There, the court concluded that UT’s longhorn logo was not a household name.
If the University of Texas’ longhorn logo was not a household name, it’s hard to see how Who Dat?, Inc., a Saints fan club company, would be a household name. Although the phrase may very well be recognizable by many, ”Who Dat?” likely would not be recognized by many as designating the goods and services of Who Dat?, Inc. Given that the chant has become ubiquitous at Saints games, it is more likely that consumers will associate “Who Dat?” not with Who Dat? Inc., but instead with the famous Saints chant. It thus appears that the defendants have a strong defense against Who Dat?, Inc.’s federal dilution claim.
While the federal dilution claim will likely fail, a critical question the district court must answer before analyzing that claim is whether “Who Dat?” can even be protected as a trademark, or whether it should be “fair game,” as the defendants now assert. But one of the most perplexing questions, an apparent anomaly in the plaintiff’s kitchen-sink-syndrome-induced litigation strategy, may remain unanswered. Why did Who Dat?, Inc. omit Young Jeezy — whose 2008 song, “Who Dat“ peaked at forty-nine on the Billboard Hot R&B/Hip-Hop Songs – as a named defendant? Maybe Who Dat?, Inc. has been listening to the troubled rapper’s lyrics: “I got court tomorrow, I won’t even go.”
– Ilana Kattan
Tagged with: advertising • blurring • Board of Regents • courts • creative content • dilution • entertainment • federal common law • government • intellectual property • lawsuits • Louisiana • media • New Orleans Saints • NFL • progress • sports • tarnishment • telecommunications • trademark infringement • trademarks • U.S. Patent and Trademark Office • University of Texas v. KST Electric • Who Dat • Young Jeezy
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