In “Terrible” Case, Federal Judge Rules that Steelers’ Trademark Was Infringed

By Joseph Mandour on December 16, 2011

Trademark InfringementLos Angeles – On December 6, 2011, Judge Arthur J. Schwab of the Western District of Pennsylvania granted summary judgment in favor of the Pittsburgh Steelers and the Allegheny Valley School Foundation, in a case involving the Steelers'”Terrible” trademarks. The trademarks, “The Terrible” and “Terrible Towel” are owned by the Allegheny Valley School Foundation, a Pennsylvania 501(c)(3) non-profit corporation. Steelers fans have been using these “Terrible” symbols for 35 years on a variety of products, and the trademarks are licensed exclusively to the Steelers.

The Defendants, Eugene Berry Enterprise and Eugene Berry, filed an application to register “The Terrible T-Shirt” with the U.S. Patent and Trademark Office on May 13, 2011. Shortly thereafter, on June 15, 2011, the Allegheny Valley School Foundation’s legal counsel wrote to the Defendants expressing its intent to oppose the application and requesting that Defendants withdraw the application. Despite this letter, during the week of August 15, 2011, the Defendants asked a textile printer to print t-shirts inscribed with “The Terrible T-Shirt A Pittsburgh Original” in a black and gold color palate – the same colors used by the Steelers in connection with their “Terrible” products.

When the textile printer asked if Defendants had any relationship with the Allegheny Valley School Foundation or the Steelers, the Defendants produced a letter purporting to give the Defendants the right to use the trademark. The t-shirts were printed and the Defendants began to sell them. Unsurprisingly, the Pittsburgh Steelers and the Allegheny Valley School Foundation sued, claiming trademark infringement under the Lanham Act.

Judge Schwab reviewed the plaintiffs’ claims under the three prongs of the Lanham Act: whether (1) the use of the trademark is valid and legally protectable; (2) is owned by the Plaintiffs; and (3) whether the defendant’s use of the trademark to identify goods and services is likely to create confusion concerning the origin of the goods and services. On the third prong, the Judge held that “A black and gold T-Shirt with the words ‘The Terrible T-Shirt A Pittsburgh Original’ is strikingly similar to plaintiffs’ trademarks” and “represented an apparent attempt to create confusion.”

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