In honor of Super Bowl weekend, I thought it would be appropriate to write about a trademark issue that many of you may have seen in the news recently regarding the ownership of the phrase “WHO DAT?,” which has been used by New Orleans Saints fans as sort of a rallying cry for many years. If you’ve been living under a rock and have no clue what I’m talking about, I recommend you read this article before reading my post.
Unlike most people who have a life outside of trademark law, this article compelled me to dig a little deeper into the history of WHO DAT from a trademark standpoint. And I’m glad I did because the Trademark Office’s records tell a story that will make your head spin.
On November 1, 2004, an individual by the name of William Myers filed an intent-to-use application to register WHO DAT for various clothing items, and about five months later, filed another intent-to-use application for WHO DAT for toys, games, dolls, and action figures. In early 2006, the NFL and the New Orleans Saints filed oppositions (which were later consolidated into a single opposition) against both applications on the basis of priority in the WHO DAT name and likelihood of confusion, as well as on the basis that Mr. Myers’ use of WHO DAT would falsely suggest a connection between himself and the New Orleans Saints. The Notice of Opposition alleged that the Saints owned two Louisiana state trademark registrations dating back to the ’80s for WHO DAT! and that the mark had become “famous” prior to Mr. Myers filing his applications. Well, after nearly three years of litigation, it appears the parties settled the matter because in December 2008, the NFL and the Saints withdrew their opposition without prejudice. Mr. Myers’ applications are both active and are currently pending.
This is where the story starts to get interesting. On March 4, 2002 (which you should note is approximately two and a half years before Mr. Myers’ filed his first application for WHO DAT), an individual named Ronnie Lee Parker applied to register the mark WHO DAT? BLUES BAND for “entertainment, namely, live performance by a musical band,” which matured into a registration in September 2004. Over five years later, on October 6, 2009, a company called Who Dat?, Inc. filed a Petition to Cancel against Mr. Parker’s registration. In reviewing the substance of the Petition to Cancel, it is clear that Who Dat? filed its challenge on the basis of its prior use of the name WHO DAT? and likelihood of confusion. But, under the law, a registration that is over five years old is not subject to cancellation on such a basis. So, you would think that Mr. Parker hired a trademark attorney to tell Who Dat? to take a long walk off a short cliff, right? Well, that’s not what the records indicate. Instead, Mr. Parker assigned the registration to Who Dat? on January 6, 2010 (hopefully for a boat-load of dough) and then, a day later, Who Dat? filed a brand new application for WHO DAT? for various clothing and music items.
Now, this is a good time to point out that Who Dat?, Inc. filed a whole bunch of intent-to-use applications for the mark WHO DAT? for a wide variety of products back in the late ’80s and early ’90s (Serial Nos. 73745956, 74218862, 74218866, 74459277, 74459278), all of which went abandoned prior to registration. In addition, Who Dat? obtained a registration for WHO DAT? for soft drinks in 1992, but it was canceled in 1998 for failure to timely renew it.
Clearly, Who Dat?, Inc. had no federal rights in any WHO DAT trademark until it obtained Mr. Parker’s registration for WHO DAT? BLUES BAND through an assignment just last month. As a result, Who Dat? now has federal priority in a federal trademark registration incorporating the phrase WHO DAT dating all the way back to 2002. Why is this important? Well, because it now gives Who Dat? priority over five other applications that were filed in just the past four months by different individuals and companies for marks that incorporate WHO DAT (not to mention the two applications owned by Mr. Myers dating back to 2004). These 5 new trademark applications are for the following marks:
– WHO DAT JE CROIS (FYI: JE CROIS translates to “I Believe”)
– WHO DAT 19-0 (which, for obvious reasons, has been voluntarily abandoned by its owner)
– WHO DAT BAT COMPANY
– WHO DAT!!
– WHO DAT SAY THEY GONNA BEAT ‘DEM SAINTS? (hopefully the owner of this application will call me when she is challenged by the Saints)
So, in conclusion, Who Dat?, Inc. was pretty darn savvy in acquiring Mr. Parker’s registration since it will now be in the position to oppose all of these applications based on prior use and registration. But, I think the question remains as to whether Who Dat? will escape a Super Bowl-sized challenge to its application by the NFL and/or New Orleans Saints. We’ll just have to wait and see.