By Cody Wilcoxson*

Texas A&M University filed a complaint in the United States District Court for the Southern District of Texas on Thursday against Indianapolis Colts, Inc. (“ICI” or “Colts”), after repeated attempts to stop the Colts from using the University’s federally registered trademark, “12th Man.” The complaint seeks an injunction against the Colts for usage of the mark and the recovery of its attorney fees, court costs, and any additional relief the court finds appropriate.

In a statement on the matter, Texas A&M President Michael K. Young explained the situation thusly: “We would prefer not to file lawsuits to protect our trademarks. However, when our intellectual property, especially the 12th Man mark which is so important to our students and former students, is used without our permission after repeated attempts to engage on the matter, we are left with no choice.”[1]

Detailed in the 12-page complaint are the events that led to Thursday’s filing.[2] In 2006, the University became aware of the Colts’ usage of the phrase inside of the RCA Dome (their home stadium at the time), and sent a cease-and-desist letter. In 2008, the Colts added “12th Man” to their ring of honor, to which the University again responded with a warning that the team was infringing on a federally registered trademark. The Colts have sold “12th Man” merchandise and present a fan award during games titled the “12th Man Award.”

The most poignant moment of the complaint came under the heading “Irreparable Injury to Plaintiffs,” where the pleading reads: “Because of the value imbued by Texas A&M in its 12TH MAN Mark, including its future value, Plaintiff has no adequate financial remedy. Unless Defendant’s unauthorized acts are enjoined by this Court, they will continue to cause irreparable injury to Plaintiff and to the public for which there is no adequate remedy at law.”

Following the 2006 cease-and-desist letter, Texas A&M and ICI had amicable correspondence at which point ICI assured Texas A&M they wanted “resolution of the matter” which theoretically included ICI ceasing use of the mark. In 2008, Texas A&M followed up with a proposed licensing agreement, but the Colts failed to respond to the letter and it appeared that ICI had stopped its usage of the mark. Four years later, however, Texas A&M was made aware of renewed use of the mark by the Colts and sent cease-and-desist letters on October 30 and November 27. Neither received a response. The final straw for Texas A&M was a July 2015 email campaign asking for Colts fans to “Join The 12th Man.”

The University is no stranger to using legal remedies to protect its “12th Man” trademark, having previously filed a suit in 2006 against the Seattle Seahawks, just days before the Seahawks played in Super Bowl XL. Ultimately, the University and the Seahawks reached a settlement of $100,000 that allows the Seahawks to license the phrase for $5,000 a year, but does not include merchandising rights.[3] The Buffalo Bills also have a limited-use licensing deal with Texas A&M to use “12th Man” inside of Ralph Wilson Stadium. The current licensing agreement between the school and the Seahawks runs out in 2016.[4]

Furthermore, Seahawks owner Paul Allen currently holds trademarks on “12,” “The 12s,” “The Spirit Of 12,” and “We Are 12.” The Seahawks’ No. 12 jersey with the nameplate “FAN” on the back has become an extremely popular item and does not infringe on the trademark. The difference, according to Texas A&M, is that the Colts are directly appropriating the language specified in the school’s trademarks.

Texas A&M holds four registered trademarks for “12th Man,” the first having been filed in 1990.[5] The moniker dates back to 1922 when E. King Gill, a former member of the football team, was asked to come out of the stands during the Dixie Classic against Centre College and suit up for the varsity football team. Despite ultimately not appearing in the game, Gill’s readiness inspired the University and led to the tradition of students standing during Texas A&M football games, always ready to be the “12th Man” on the field.[6]


*Staff Writer, Villanova University Sports and Entertainment Law Society Blog; J.D. Candidate, May 2018, Villanova University School of Law.

[1] Darren Rovell, Texas A&M says Colts ignoring calls to stop use of ’12th Man’, ESPN.com (Nov. 12, 2015), http://es.pn/1OGSLs8.

[2] A complete version of Texas A&M’s complaint can be found at http://www.kbtx.com/sports/home/headlines/Texas-AM-University-Files-12th-Man-Trademark-Suit-vs-NFLs-Indianapolis-Colts-347088142.html.

[3] See Alicia Jessop, Texas A&M Stands to Earn More in Upcoming 12th Man Trademark Licensing Negotiations as Seahawks’ Exposure Rises, Forbes SportsMoney (Jan. 31, 2014, 9:56 PM), http://www.forbes.com/sites/aliciajessop/2014/01/31/texas-am-stands-to-earn-more-in-upcoming-12th-man-trademark-licensing-negotiations-as-seahawks-exposure-rises/.

[4] See id.

[5] The trademarks can be found at http://tsdr.uspto.gov/#caseNumber=74013898&caseType=SERIAL_NO&searchType=statusSearch.

[6] See http://traditions.tamu.edu/traditions#twelfthman.

 

 

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