FanPost

End of the 12th Man?

The Seahawks are 2 days away from securing a berth to its second consecutive Superbowl. Consistent defensive performances over the last three years have thrust the Seahawks D into debates about the all-time greatest NFL defense. The offense is also doing well, ranked 4th overall in DVOA as of 1/16/14.

It has never been a better time to be a Seahawks fan. Die-hard fans have been rewarded after almost 40 years of wandering in the desert of sports hell. The fan base has also been reinvigorated by new fans arriving in droves of bandwagons. Jersey sales for the Seahawks are booming. All legions of Seahawks fans unite under the banner of the 12th Man. Unfortunately, the 12th Man has an execution date of July 21, 2016. The question is whether that execution date will be stayed. While it seems absurd that Seattle's "12th Man" could die in a year, especially given the media coverage, it could actually happen.

Abbreviated History

The 12th Man seemed to originate around 1900 to describe the influence of fans on the game. During the playoffs in 1922 (after the 1921 season) Texas A&M was so depleted by injuries that it called E. King Gill from the stands to be a reserve player. Though Gill did not play, Texas A&M somehow defeated a heavily favored Centre College of Kentucky team in the first Cotton Bowl. Gill became a symbol for the willingness of Aggie fans to do whatever it takes to will their team to victory. Thus, the 12th Man was born.

Texas A&M continued to use the mark through the years. Several professional teams also began to use the phrase including the Seahawks, Packers, Bears, Colts, Bills, Redskins, Broncos, and Dolphins. In fact, the Seahawks, an expansion team created in 1976, retired it's #12 jersey in 1984 to honor its 12th Man.

Texas A&M Trademarks

Texas A&M finally sought several related trademark registrations beginning in 1989. The first round sought registrations for 12TH MAN for international classes* 16, 20, 24, 25, and 36 in 1989 with first uses** ranging from 1983-84. (Note, the Seahawks may be able to claim first uses before 1983.) In 1994, the second round sought registrations for international classes 14 and 41 with first use dates in 1989 and 1922 (Cotton Bowl), respectively. In 1997, a third round sought a registration for 12TH MANIA! associated with international classes 21, 24, and 25 based on first uses in 1996. A fourth round in 2007 sought a more detailed registration tan the 1994 registration for class 41 with a first use date of 1922. A final registration was filed in 2013 relating to videogames, but the registration was canceled.

Trademark Enforcement

After acquiring federal trademark registrations, Texas A&M began to send cease and desist letters to other teams that were also using the 12TH MAN. Most teams discontinued use of the phrase rather than risk expensive litigation. Seattle initially refused to comply. Texas A&M began to forcefully pursue the Seahawks' "infringing" use around the 2005 season, not coincidentally, the first year the Seahawks had been elevated into the national spotlight in quite some time. In 2006, Texas A&M initiated litigation, which quickly led to a settlement between the Seahawks and Texas A&M.

Licensing Agreement

The resulting settlement provided benefits to both sides in the form of a licensing agreement. For Texas A&M, the Seahawks organization concedes that it will not challenge the Texas A&M registrations. Also, the Seahawks will greatly restrict its use of the 12TH MAN in merchandising. For the Seahawks organization, it avoided litigation for the price of $100,000 up front and $5,000 per year for 5 years with an option to automatically renew for an additional 5 years for $5,000 per year ($150,000 total). The Seahawks renewed the licensing agreement in early 2011, meaning it will expire on July 21, 2016.

Post-2016

It is unclear what will happen after the current licensing agreement expires. The original agreement was created before social media became ubiquitous. Each side must consider the basic pros and cons of continuing to license the 12TH MAN.

A&M Pros: Like Russell Wilson, Texas A&M is in a position to cash in. If Texas A&M does not want to pursue expensive litigation it could probably pocket a few easy million in royalties by continuing to license out the 12TH MAN to Seattle. Also, with the Seahawks contractually obligated to report known infringers of the mark, Texas A&M would lose an important ally in enforcing rights to the 12TH MAN.

A&M Cons: While Texas A&M will likely not make the mistake of casually valuing the 12TH MAN again, it may not want to remain in the long shadow cast by Seattle's 12TH MAN. As Seattle has promised to not contest the Texas A&M registrations, Seattle's use of the 12TH MAN would be limited, at best, without a new licensing agreement. Killing off Seattle's 12TH MAN would likely leave Texas A&M as the most prominent 12TH MAN (with mild competition from the Bills).

Seattle Pros: The 12TH MAN has become ingrained in the Seattle fan base. Seattle has done such an amazing job of building up the brand of the 12TH MAN, it would seem imprudent to simply walk away unless Texas A&M asks for too much money. While the Seahawks will likely need to pay substantially more money to continue using the mark, it would not make sense to rebrand the fan base in the middle of the best run in franchise history.

Seattle Cons: While losing the 12TH MAN would be a major blow, the fan base would recover. On one hand, we easily switched from Qwest Field to Century Link (The Clink). Von Trapp's became Rhein Haus. (Though the Pac-10 will never be the Pac-12.) On the other hand, Seahawks fans will continue to consider themselves 12th (wo)men regardless of whether the trademark license is renegotiated. The licensing agreement even states that Texas A&M recognizes it cannot limit all combinations of 12th ___ associated with football such as 12th Seahawk (as stated in provision 7.1 of the full agreement). For example, KCPQ (Q13 Fox) frequently refers to the Seahawks fan base as the "twelves." A subtle, but distinct switch to a phrase like the "twelves" or "12th 'Hawks"could maintain much of the goodwill already created by the Seahawks while both avoiding a pricey pay out and granting an expanded ability to merchandise.

Conclusion

Ultimately, I believe both sides will find middle ground and strike a new deal. Texas A&M will get significantly more money. Perhaps the Seahawks can get Texas A&M to loosen some of the merchandising restrictions. Renegotiations were reported as early as a year ago. But even if the Seahawks could no longer use the 12TH MAN, the fan base would eventually adapt to a new identity.

Feel free to add your thoughts on whether the Seahawks and Texas A&M should continue licensing the 12TH MAN. If there is enough interest, I can try to analyze the extent the Seahawks could continue using the 12TH MAN phrase if no agreement is reached. Most importantly, GO HAWKS!

Footnotes

*International classes describe the type of good or service associated with a trademark. There are 45 classes in total, as described here. To oversimplify, the basic idea is that a certain trademark can be claimed for one class (or set of coordinated classes) while remaining available in other classes. For example, registering 12TH MAN in class 1 may not prevent another person from using 12TH MAN in class 41.

**First use is an important concept in trademark law. First use determines who has superior rights in a trademark .For example, if there are two burger chains who use the same mark, the one who used it first will have superior rights to the one who used it second. However, there are other considerations such as the geographic market in which both marks were used, whether the second user has a registered mark that has reached incontestable status, etc.

Go Hawks!

This was originally posted at http://dejarnattlaw.blogspot.com/2015/01/the-end-of-12th-man.html