How this lawsuit slipped past the offensive line is beyond me; maybe Flozell Adams and Marc Colombo let it through, like everybody else trying to sack whoever's under center for Your Dallas Cowboys. But on October 16, the Dallas Cowboys and NFL Properties filed a federal suit in the Northern District of Texas against a Lakeville, Minnesota-based company calling itself America's Team Properties. C'mon, take one guess what the suit's about. Just one. Yup: trademark infringement.
But it's more than just yer regular infringement suit; there's more here than just some upstart company trying to rip off the well-established nickname of Your Dallas Cowboys, who branded themselves with the familiar moniker in 1979 when naming the 1978 season highlight reel, uh, America's Team. In fact, from the looks of the court documents this battle between the Cowboys, who never formally trademarked the nickname but have established a proprietary right to the name, and America's Team Properties, Inc., has been going on for some 16 years. During that time, the Minnesota company actually obtained a federal trademark for the name, tried to auction off the name (to the Cowboys, even) and finally threatened to file its own suit against the Cowboys should Jerry Jones keep using the name. The Cowboys' suit is a pre-emptive strike--and one giant screw-you, as evidenced by the hundreds of pages included in the suit that prove "America's Team" has been the Cowboys' nickname for 27 years. Indeed, among its filings are dozens of nationally distributed newspaper stories and even letters to the editor dating back to the late 1970s; in every one the Cowboys are referred to as "America's Team."
There's some fascinating background about the suit that will follow after the jump--including the fact that the party being sued here had no idea it was being sued till Unfair Park called for comment--but it seems the Cowboys were spurred into action over the creation in the fall of 2005 of this Web site. Last year, the Cowboys say, America's Team Properties "initially represented itself as a charitable organization purporting to raise money for the 'families of American Soldiers who have lost their lives in the war on terror' from the sale of wristbands bearing the trademark AMERICA'S TEAM." The company was selling T-shirts, hats, sweatshirts and other clothing items also bearing the phrase.
But if you go to the site now, that's hardly its purpose these days. As it says on America's Team USA's site now, it's there to "spotlight the teams and individual athletes who make a difference in sports, contribute to the community and make good role models." Oh, and it has chosen the Pittsburgh Steelers to be "America's Team" this season, "based on [its] integrity, teamwork, sportsmanship and commitment to the community." The Steelers get some kind of an inscribed plate for doing all that; says on there, what else, "America's Team." In the Cowboys' legal filings, it says the Steelers are unaware of such an "award" and that if the team had known about it, "they would have declined to accept it."
The Cowboys also aren't thrilled by the fact that the Web site looks kinda like something the Cowboys might be associated with. Either that, or America's Team founder, president and CEO Bryan S. Reichel picked a silver, blue and white color scheme completely by accident. Doubtful, say the Cowboys:
"Defendant's continued use of AMERICA'S TEAM trademark is likely to cause consumer confusion or to deceive consumers into thinking that Defendant is authorized, affiliated, sponsored or otherwise associated with the Dallas Cowboys and/or NFLP, is likely to diminish and blur and/or tarnish the meaning of AMERICA'S TEAM, thereby diluting its distinctive quality," says the lawsuit. The Cowboys want Reichel to stop using the name--and to leave the Cowboys the hell alone.
According to the lawsuit, on June 6, 1990, a Minnesota-based company called MEOB, Inc., filed with the U.S. Patent and Trademark Office an intent-to-use application for the phrase "America's Team," which the company wanted to put on T-shirts it was trying to sell. Five years later, on June 13, 1995, MEOB got that trademark.
"Between November 1995 and March 1997, MEOB approached the Cowboys on a number of occasions attempting to license the AMERICA'S TEAM mark for a royalty," says the Cowboys' suit. And, indeed, included in the pleadings is a November 17, 1995, letter to Jerry Jones from MEOB's attorney, Lee Johnson, in which MEOB says it would "consider licensing" the nickname to the Cowboys, as "it has come to our attention that the Dallas Cowboys are, at times, referred to as 'America's Team.'" And if the Cowboys aren't interested, Johnson wrote, "our client has other opportunities to license or otherwise exploit its registered trademark."
MEOB did not stop there. On July 11, 1996, Johnson shot off a letter to NFL Properties in New York City demanding that it and its licensees, which would include the Cowboys, "cease and desist from further use of the America's Team trademark." MEOB also wanted to know the names of other companies that did use it, so it could go after them as well. "Of course," Johnson wrote, "our client wishes to settle this matter on an amicable basis."
It took NFL Properties almost a year to respond, but when it did, in February 1997, assistant counsel David Proper minced no word about its position on the name "America's Team." In his letter to Johnson, Proper wrote that the Cowboys have used the "trademark" since 1979 and done so "continuously...in conjunction with a wide range of goods and services." In short: Everybody knows who you're referring to when you talk about "America's Team." Proper said NFL Properties had no problem with MEOB using the name as a brand name, so long as it didn't actually appear on its clothes.
Throughout March 1997, Proper and Johnson traded missives in which each attorney said his client had the rights to the moniker: Johnson said he was "not convinced" the 1978 highlight film "gives any rights to the Dallas Cowboys or NFL with respect" to the use of the name, and he said, hey, someone called the Green Bay Packers "America's Team" during a broadcast of the 1997 Super Bowl, so there. Proper shot back that "regardless of whether you agree," and regardless of how some guy on TV referred to the Packers, it's still how the Cowboys are known. Proper also threatened to go after MEOB for infringement, should it come to that.
Then came the ultimate kick in the pants. In March 1998, according to the U.S. Patent and Trademark Office's Web site, MEOB sold and transferred its registration to America's Team Properties, which is one of Reichel's companies. On May 14 and May 17 the next year, Reichel placed an ad in USA Today looking to auction off the name "America's Team"--"one of the country's most recognizable trademarks," says the ad--to the highest bidder. Bids were due June 1, 1999. And they were to be no lower than $500,000. There were no takers.
And, for four years, the issue appeared to be dead; there were no more offers, no more threats. Not until October 2003.
That's when the U.S. Trademark Trial and Appeal Board ruled that Reichel was the legal owner of the trademark. The board's involvement and decision stemmed from ongoing litigation with the United States Olympic Committee, which also wanted to use the phrase but was blocked by Reichel's ownership of the 1995 trademark. On October 8, there was an Associated Press story that insisted: "'America's Team' doesn't belong to the United States Olympic Committee, or to Jerry Jones in Dallas, or to George Steinbrenner in New York. No, 'America's Team,' or at least the rights to the name, belongs to Bryan Reichel, a Minnesota small-businessman, a federal trademark panel has ruled."
That AP story was included in an e-mail Reichel sent to the Cowboys, once more insisting they pay $400,000 for use of the trademarked phrase. One of the Cowboys' attorneys, Kevin Smith, wrote that the team had "no interest" in paying for the name and, further, since the team has been referred to as "America's Team" since 1979 it didn't need to purchase the registration in order to keep using the name. This didn't sit well with Reichel, who sent more and more e-mails to Smith that got angrier and angrier in tone. In one he wrote Smith that if the Cowboys "had the right to own [the name], they would have had their name on CNN for winning a suit against the USOC instead of mine." Smith countered that Reichel's interpretation of the trademark board's ruling was inaccurate: "Rights in a trademark accrue by usage--NOT by ownership of a registration." Smith would later say that the board's ruling also applied only to the USOC issue
Reichel wasn't impressed: "The Cowboys are infringing," he insisted. "Mr. Jones was put on notice quite some time back." Smith responded with a virtual yawn: "Best of luck with your sale efforts."
Two months later came a new batch of e-mails in which Reichel wanted to confirm that the Cowboys weren't gonna fork over the dough so he could so find someone else who would. Smith said the team wasn't interested. But he did mention that he "did attempt to solicit a more reasonable counter-offer," and that Reichel's representative in the sale, Bob Francisco, wasn't interested in negotiating. Reichel asked Smith for a number. Smith declined to give one: "My client does not need or particularly want" the registration, he wrote, "so they did not and will not make an offer." Smith said he just wanted Francisco to make a "realistic" offer that he might take to Jerry Jones, but Francisco refused to come off the $400,000 figure since he had "others beating down the door to buy it." Smith wished Reichel well. Reichel responded with: "You have been put on notice."
Which arrived on April 22, 2004, in the form of a letter from America's Team Properties' attorney Stephen Baird, who wrote Jones and then NFL Commissioner Paul Tagliabue that the Cowboys use of "America's Team" was an "unauthorized use of a federally registered trademark," and that the team and NFL Properties were to stop selling stuff bearing the phrase pronto. A month later, David Proper from the NFL sent America's Team Properties a response that said, in short: No.
The Cowboys would discover in January 2005 that Reichel's company had been licensing the phrase to other apparel manufacturers. One, BostonT, started selling shirts that referred to the New England Patriots as "New England America's Team," without the authorization of NFL Properties. NFLP sent a cease-and-desist letter to BostonT, who responded by claiming it has licensed the phrase from Reichel's company and thought it had every right to use the phrase. NFLP sent another letter saying, in short, not so much. That prompted a letter from Reichel's attorney to David Proper in which Stephen Baird wrote that it had BostonT stop using the phrase, but that the Cowboys and NFLP once more stop using the phrase since neither "have been able to demonstrate any prior common law rights" to the phrase.
And it got uglier still.
The Cowboys say that between September and November of last year, Reichel filed 16 trademark applications with the U.S. Patent and Trademark Office, so he could use the name "America's Team" on everything from "dairy-based beverages and milk" to car dealerships. In March, the Cowboys and NFLP filed a protest with the USPTO, which will go before the Trademark Trial and Appeal Board.
The Cowboys want the court to cancel the 1995 trademark--to wipe it from existence. The team also wants the court to rule that the Cowboys have every right to use the trademark however it sees it, in connection with football or anything from "textile goods [and] foods [to] jewelry and credit card services." And it wants Reichel to stop using "the colors blue, silver and white" on his Web site. And it would like him to, ya know, leave the Cowboys alone.
The attorneys handling the case for the Cowboys, Levi McCathern and Margaret Mead, were out of the office and unavailable for comment. Reichel says he was unaware there was a lawsuit till reached by Unfair Park. "I appreciate you telling me," he said Wednesday. "Are you always the bearer of bad news? So they've upped the ante a little bit. Interesting."
He repeats his claim that the Dallas Cowboys don't own the name "America's Team" and says he's glad Jones didn't take him up on the $400,000 offer in 2003; "I see a better use of the mark now," he says, once more demanding that the team stop using the nickname.
"I am sure you've been called names, and I don't see you printing up a coin commemorating the event," he says. "This isn't a team's name... America's Team isn't high-paid athletes that can't stay out of jail, and I am not talking about the Cowboys specifically. But on our Web site we're looking for the true America's Team in every sport, and it's performance on and off the field...I think this is just the Cowboys got sour grapes because they don't own the name."
Perhaps so, but why does Reichel think the Cowboys decided to sue now? After all, they've known about the trademark registration since 1995 and have done nothing to stop him or his predecessors from using "America's Team" on their products.
"I don't know why they sued now," he says. "It's hard for me to say. It's a fair question. I can't judge it. They've known about the ownership forever. I would think they'd be more interested in polishing the moniker 'Dallas Cowboys' rather than being 'America's Team,' which is something, in my opinion, they're not."
Reichel says he will read the suit in its entirety and get back to us. Till then, Unfair Park will be referred to as "America Steam." Oh, wait. That's already taken too. --Robert Wilonsky
