Recently, however, a “new” player has emerged. On March 4, Who Dat? Inc. (“WDI”) filed a lawsuit against the NFL, the New Orleans Saints, the Louisiana Secretary of State and the State of Louisiana. A copy of the Complaint can be found here. According to the Complaint, WDI was behind the creation and subsequent promotion of the “WHO DAT” cheer. “WHO DAT” was born in 1983, and, since that time, WDI has filed a number of trademark applications for the mark when used in connection with a variety of goods, ranging from clothing, to potato chips and soft drinks. Although WDI cites these marks in its Complaint as evidence of its trademark rights, most of these marks have been abandoned (for a variety of reasons including failure to respond to an Office Action and failure to file a Statement of Use). For a thorough breakdown of WDI’s filings and more background on the case, check out Ryan Gile’s coverage.
Although this case just got underway, and it’s hard to predict where it will go, it certainly drives home the importance of the source-identifying function of trademarks. As Ryan Gile notes:
“Just because you come up with a unique phrase does not mean that you have any exclusive rights to the term to the extent you are not actually using it in a manner that would be recognized as a source identifier in connection with particular goods and services.”
So what’s the takeaway for someone who just came up with a unique phrase? There are two basic things to consider here. First, and most obviously, you want to make sure that the mark you’ve created is being used as a trademark, and that it’s distinctive. Generally, “arbitrary” or “fanciful” marks such as APPLE (when used for computers) or XEROX (a made up word) are stronger trademarks. Weaker, less distinctive marks would be ones that contain the words describing the goods or services being sold (e.g., LAWN CARE EXPERTS, used for lawn care services). Second, you want to make sure your mark identifies you as the only source of the goods/services you sell. This is where knockoffs come into play. And if you come up with a cool phrase that gains popularity the way “WHO DAT” has, this becomes a particular challenge. Unlike copyright, where you can receive protection simply by virtue of being the first in line to do something cool, trademark only protects you if the word or phrase you’re using indicates to consumers that you are the source of the goods/services on which the mark appears.