Law Firm Sues Las Vegas Raiders for Threatening Trademark Infringement Claim

The NFL and Las Vegas Raiders threatened to sue a local law firm for trademark infringement, after the firm hired one of its athletes to appear in an advertisement with black and silver branding. Scott Hervey and Josh Escovedo talk about this dispute on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: I’m Scott Hervey with Weintraub Tobin. Josh: I’m Josh Escovedo with Weintraub Tobin. A dispute has arisen between the owner of the Dimopoulos Law Firm and the NFL over the NFL threatening to sue the firm for trademark infringement. That’s what we’ll be discussing on this installment of the Briefing by the IP Law Blog. Josh: In a recently filed complaint in federal court, the Dimopoulos Law Firm, a personal injury firm based in Las Vegas, Nevada, alleges that it has been using a black and silver color scheme to promote its services since its inception in 2012. However, they recently hired three professional athletes, including Jon Bones Jones of the UFC, William Karlsson of the Vegas Golden Knights, and most importantly for this case, Maxx Crosby of the Las Vegas Raiders, to appear in a new advertisement. According to the firm, the advertisement did not feature any logos or trademarks of the NFL, the Raiders, or any other sports teams. Despite this, the complaint states, the NFL sent Dimopoulos a cease-and-desist letter accusing the firm of unauthorized use of the Raiders' marks. Scott: That's quite interesting. So, what are the grounds for this dispute? Josh: Well, according to the cease-and-desist letter, the NFL claims that Dimopoulos used hashtags including the Raiders' marks and engaged in unauthorized use of their marks. However, it’s worth noting that the Complaint alleges that the advertisement did not feature any NFL logos or names, and the disclaimer on the Dimopoulos Law Firm website and YouTube page make it clear that the firm is not affiliated with the NFL. Scott, based on what know so far, do you think the NFL has a strong case? Scott: Personally, I don't think so, but all we’ve heard so far are the allegations of the Complaint and the cease-and-desist letter. I may feel differently once more facts are discovered. However, with the limited information we have so far, it seems that the advertisement didn’t feature any NFL logos or word marks. In fact, according to the law firm, the only logo that shown was the Dimopoulos Law Firm logo. Furthermore, we’re informed that the disclaimer on the website and YouTube page clearly state that the firm is not affiliated with the NFL. So, it's hard to see how a reasonable consumer could be confused into thinking that the firm is affiliated with the NFL. Josh: I certainly understand that position, and I’m not saying I disagree, but what do you think about the point that the firm raises in the Complaint concerning the fact that multiple professional sports teams, including the Los Angeles Kings, the San Antonio Spurs, and the Chicago White Sox use a silver and black color scheme. Scott: Well, it’s a reasonable point to make, but it’s also fair to say that none of those teams play football like Crosby does in the advertisement, and none of those teams are in Las Vegas, where the law firm happens to sit. Josh: True, but according to the Complaint, the Raiders hadn’t even relocated to Las Vegas from Oakland until four years after the law firm started using the silver and black color scheme. With that said, I suppose it doesn’t matter if the team is in Las Vegas or Oakland, if it has protectible IP in its color scheme and the adverti...