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Keywords

summary judgmenttrademarkcorporation
plaintiffdefendanttrialtrademark

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Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427, 51 U.S.P.Q.2d 1920

Facts

Johnny Blastoff, Inc., a corporation that creates and markets cartoon characters, filed a trademark application for the name 'St. Louis Rams' shortly after the NFL announced the relocation of the Los Angeles Rams to St. Louis. The NFL and the Rams had established significant public association with the 'St. Louis Rams' mark prior to Blastoff's application. The NFL sought summary judgment against Blastoff's claims of unfair competition and trademark infringement, asserting that they held superior rights to the mark based on prior public use and recognition.

On January 17, 1995, a press conference was organized in the city of St. Louis by Georgia Frontiere, owner of the Los Angeles Rams club, and St. Louis Mayor Freeman Bosley who announced that the Rams club intended to relocate from Los Angeles to St. Louis.

Issue

Did the NFL and the St. Louis Rams establish prior protectable rights in the 'St. Louis Rams' trademark, and did Blastoff have standing to bring claims of unfair competition and deceptive advertising under the Lanham Act?

Whether the NFL defendants had acquired protectable rights in the mark 'St. Louis Rams' prior to Blastoff.

Rule

A party may acquire a protectable right in a trademark only through use of the mark in connection with its product. The determination of whether a party has established protectable rights in a trademark is made on a case-by-case basis, considering the totality of the circumstances. Evidence of actual sales is not necessary to establish ownership of a trademark, and public identification of a mark can be established through advertising and media coverage.

A party may acquire a protectable right in a trademark only through use of the mark in connection with its product. The determination of whether a party has established protectable rights in a trademark is made on a case by case basis, considering the totality of the circumstances. Evidence of actual sales is not necessary to establish ownership of a trademark.

Analysis

The court found that the NFL had established protectable rights in the 'St. Louis Rams' mark prior to Blastoff's application due to extensive media coverage and public association with the mark following the announcement of the Rams' relocation. Blastoff's limited use of the mark did not establish priority, and the NFL's prior public use created a strong presumption of their rights. Additionally, Blastoff lacked standing to bring claims under the Lanham Act as they could not demonstrate a reasonable interest in the mark or a discernible competitive injury.

The trial court, reflecting the defendants' view, stated that 'by the time plaintiff filed its Wisconsin registration in February 1995, a substantial portion of the public associated the mark 'St. Louis Rams' with defendants' football club.'

Conclusion

The court affirmed the district court's summary judgment in favor of the NFL and the Rams, concluding that they held superior rights to the 'St. Louis Rams' trademark and that Blastoff lacked standing to pursue its claims.

We affirm the district court's ruling that the NFL did not infringe Blastoff's 'St. Louis Rams' mark under Wisconsin law; Blastoff infringed the NFL's trademark rights.

Who won?

The NFL and the St. Louis Rams prevailed in this case due to their established prior rights in the 'St. Louis Rams' trademark, which were recognized through significant public association and media coverage prior to Blastoff's trademark application. The court determined that Blastoff's claims of unfair competition and deceptive advertising were without merit, as they failed to demonstrate any protectable rights in the mark.

The defendants made a number of attempts to protect their 'St. Louis Rams' NFL football club mark. In August of 1995, the defendants sent the plaintiff a cease and desist letter concerning its unauthorized use of the 'St. Louis Rams' name.

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