"GRONK" Trademark Claim Lives On

May 8, 2014

Last month, the United States District Court, District of Massachusetts ruled that New England Patriots player, Rob Gronkowski, and his two brothers sufficiently alleged claims of trademark infringement against the defendant, Sully Tees, LLC, allowing the football players to proceed with the case.

In Gronk Nation, LLC v. Sully's Tees, LLC, brothers Rob, Christopher, and Daniel Gronkowski - all professional football players - alleged that one or more of them have been well known for their athletic achievements since at least the fall of 2005, and are associated with the word or nickname "Gronk." The brothers established Gronk Nation LLC, and assigned their intellectual property rights in the use of their names, nicknames, images, pictures, likenesses, and trademarks to Gronk Nation. Gronk Nation received Federal Trademark Registrations from the United States Patent & Trademark Office for "GET GRONK'D," "GRONK NATION," and "GRONK" in December 2012. The LLC sells t-shirts in interstate commerce that use these trademarked phrases and derivatives thereof, and donates its profits to a charitable organization that supports youth activities.

In May 2012, Gronk Nation became aware that the defendant, Sully Tees, LLC had been selling t-shirts using the "GRONK" trademark, without a license or permission from Gronk Nation or the Gronkowski brothers, since at least September 2010. Gronk Nation served a cease-and-desist letter on the defendant, and then filed a lawsuit against it, alleging (1) trademark infringement under the Lanham Act; (2) unfair trade practices in violation of M.G.L. c. 93A; (3) common law trade name infringement; (4) trade name and trademark infringement under Massachusetts state law; (5) trade name and trademark dilution under Massachusetts state law; and (6) misappropriation and unauthorized use of name, portrait, or picture. Sully's Tees moved to dismiss the lawsuit, alleging, among other things, that Gronk Nation had failed to state a claim upon which relief could be granted.

The district court disagreed. In its analysis, the court noted that trademark infringement requires a showing both that the mark is entitled to trademark protection, and that the allegedly infringing use is likely to cause consumer confusion. The federal Lanham Act creates liability for such infringement, including for a successful celebrity "false endorsement" or "false sponsorship" claim. In such cases, famous persons have claims under the Lanham Act where the defendant's conduct has created a likelihood of confusion as to whether the famous person is endorsing the defendant's product.

In this case, the court found that Gronk Nation alleged all elements of the claims it asserted against Sully's Tees. The judge rejected Sully's Tee's argument that it did not use the "GRONK" mark after the mark received federal registration, noting that a trademark need not be registered in order to be protected. Rather, registration of a trademark is only prima facie evidence of a valid trademark. Additionally, at the motion to dismiss stage, the court rejected the defendant's argument of prior use of the mark.

Protecting a trademark can be essential to the goodwill of a business. Trademark protection requires both proactive efforts (such as ensuring evidence of use of the mark in commerce and registering the mark) and affirmative enforcement of one's trademark rights through cease-and-desist letters and, if necessary, litigation when those rights are threatened. Contact Parker | Scheer's business lawyers today for assistance with protecting your business's trademarks and other intellectual property rights.