Who Dat Controversy – NFL v. T-Shirt Vendors
In the recent media run up to the Super Bowl, a trademark battle between the National Football League (NFL) and New Orleans t-shirt vendors has garnered enough attention worthy of a pre-game show and a bit of off-the-field analysis here at Inside Trademarks.
About a month ago, the NFL sent cease and desist letters to several New Orleans t-shirt vendors ordering them to stop marketing, producing or selling t-shirts bearing the phrase "Who Dat" and Saints or NFL trademarks. The "Who Dat" chant has been chanted by Saints fans for years at football games, and has origins going back to the 1930's (pre-dating the NFL).
Many initial media reports stated that the NFL claimed to own the trademark to the term "Who dat" in these letters , and that the NFL asserted that unlicensed t-shirts bearing the phrase "Who dat" would cause confusion among consumers and fans shopping for official Saints gear (i.e. NFL licensed merchandise).
These letters and the media buzz that ensued stirred up the Who Dat Nation (Saints fans) and many football fans in general. The NFL's trademark enforcement action even provoked responses from U.S. Senator David Vitter and Congressman Charlie Melancon of Louisiana, and the Attorney General of Louisiana among others. They even sent letters and conducted teleconference calls with NFL Commissioner Roger Goodell regarding the NFL's reported attempt to claim ownership of "Who Dat".
All the negative press prompted the NFL to issue a "clarification" of its position. And on Feb. 1, 2010, the NFL through its spokesman, stated that it only intended to challenge the sale of apparel that uses “Who Dat” in connection with the Saints’ trademarks or logos, and has no interest in pursuing merchandise that just has “Who Dat” logos, and that the NFL will only take enforcement action when the “Who Dat” is advertised as official Saints or NFL gear.
So, why all the controvery? To put it simply - Money.
The NFL monetizes it trademarks better than any other sports business in the US. In fact, the NFL generates hundreds of millions of dollars, if not billions, from the sale and licensing of NFL apparel and merchandise. Reportedly, the 10 best selling jerseys in the entire sports business all come from the NFL. (Forbes, Oct. 30, 2009).
The Bling Bling Trademark – Would’ve, Could’ve, Should’ve
How often have you heard the term “bling bling” used over the past decade?![Chopper_city[1]](http://insidetrademarks.com/wp-content/uploads/2010/01/Chopper_city12-300x295.jpg)
Chances are you’ve heard the term a lot over the past decade, unless of course you don’t buy or care about jewelry, and you never pay attention to celebrities, pop culture or listen to hip hop music.
Christopher Dorsey, (a.k.a. B.G., B. Gizzle or Baby Gangsta), a rap artist from New Orleans, Louisiana is credited by many as having “coined” the term “bling-bling”. B Gizzle’s first major-label debut album with Universal Records, Chopper City in the Ghetto, released in the fall of 1999 and contained the track “Bling Bling”. This song quickly became a major hit in the US and throughout the world. “Bling Bling” became a popular slang term for expensive jewelry, luxury vehicles and other forms of material excess. Use of the term “bling bling” became so widespread that the Oxford English Dictionary added the term “bling bling” by 2003.
Unfortunately for B Gizzle, neither he or his “advisors” at the time sought to trademark the term “bling bling”. It would have been a great brand name for a line of jewelry, watches, high-end clothing, automotive accessories (or other luxury goods) that B Gizzle could have easily marketed. After all, he was widely known to sport multiple Rolex watches and insanely expensive jewelry.
In 2005, perhaps realizing that the “bling” was gone, B Gizzle was quoted as saying ”I just wished that I had trademarked [bling bling]…so I that didn’t have to work anymore.”
So at this point, you may wonder, if B Gizzle didn’t trademark “bling bling” and cash in on it, who did?
We looked into this, and the answer is - a lot of people – especially in the jewelry industry.
Here’s some of what we found:
- Over 500 trademark applications containing the term “bling bling” were filed just in the U.S. alone after the fall of 1999.
- Nearly 1/2 of those filings relate in some way to jewelry, precious metals and gemstones.
- Many of the other 1/2 relate in some way to high-end luxury goods such as clothing, cosmetics, fragrances or auto accessories.
- Arguably, the majority of these filings were “inspired” by the popular usage of the term “bling bling”.
- Even a major toy company, Mattel Inc., got in on the action in 2005 with a L’Bling trademark filing for a toy luxury vehicle.
- If B Gizzle filed to protect the trademark ”bling bling” in connection with jewelry (or other goods such as luxury vehicles, accessories or clothing) at the time of, or just after the release of his hit album, he would have had rights far senior to the majority of these 500 or so other “bling bling” wannabees.
So, not only would’ve B Gizzle been in a position to demand license payments from the “bling bling” wannabees (including many using the domain online), but he could’ve been in position to further leverage or co-market a “Bling Bling” line of jewelry with a major jewelry retailer, or with various luxury good makers; and he should’ve have been retired and not “have to work any more” thanks to all the residual income generated from the “Bling Bling” trademark licensing program.
Lessons Learned:
1. Would’ve, Could’ve, Should’ve is not fun.
2. No trademark filing + no trademark strategy = no money
3. Trademark registration + trademark strategy = “not have to work” money
