Fighting the Crimson Tide of Litigation: Auburn University v. Mike Moody, Trademark Infringement, Profit Motive, Similarity and Likelihood of Consumer Confusion, University Marks

Auburn Univ. v. Moody, 2008 U.S. Dist. LEXIS 89578 (M.D. Ala. Nov. 4, 2008)


Mike Moody, football coach for the University of Alabama’s Crimson Tide, made a comical six fingered foam hand with the trademarks of Auburn University’s football team, including the Auburn University School name and their War Eagle chant. (Mike Moody was an Auburn alumnus, and Auburn at the time was on a winning streak.) The court found that Auburn’s trademarks are uncontestable. Moody claimed he had no real motive for profit, rather he wanted, "fun to celebrate and hopefully, make enough money to pay the costs and buy some beer." However, the court found that the foam hands were placed in commerce, because they were being sold online at sixfingeryear.com and he was unlucky enough that a member of Auburn's Trademark Management and Licensing Office bought one. Against Moody’s contention that the Auburn mark is geographically descriptive, the court found that the widespread use of the marks proved that they are strong. The court then considered the overall impression of similarity between Moody’s six fingered foam hand and Auburn University’s licensed foam hands. The court found that the colors were similar, and that even though Moody didn’t use the interlocking AU® mark on his hand, the words, “Auburn,” and “War Eagle” were enough for similarity and likelihood of confusion. The court also found that the consumers were the same, because only Auburn University students would be interested in either of the foam hands. The court found that the factors for trademark infringement weighed in Auburn’s favor, and found that their requested preliminary injunctions to prevent Moody from selling the foam hand, to destroy the hands and to remove trademarks from the sixfingeryear.com website were appropriate.

Trademark Counterfeiting Act: Parallel Brands, The Helms-Burton Act, Cuban Cigars

United States v. Penton, 2008 U.S. App. LEXIS 25373 (11th Cir. Fla. Dec. 17, 2008)


NOTICE: SEE FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 WHICH GOVERN CITATION TO UNPUBLISHED OPINIONS.

The Defendant appealed from a judgment that found him in violation of 18 U.S.C.S. § 2320(a), the Trademark Counterfeiting Act. The defendant was caught when an undercover officer went to his shop and purchased cigar boxes that looked similar to trademarked “Cuban” cigar boxes. The defendant contended that the trademarks of the “Cuban” cigars were not valid United States trademarks because of the Helms-Burton Act, at 22 U.S.C.S. § 6032(h). However, the companies at issue, although originally from Cuba, had set up independently in the United States after the owner families fled from Cuba. The companies had established trademarks in the U.S. by common law. In the meantime, back in Cuba, there were still the other separate brands with the same marks, now run by the Cuban government. Consequently, parallel brands had developed, with the Cuban government selling Cuban style cigars made in Cuba to the rest of the world, and the Cuban exile company selling Cuban style cigars made in the United States distributing them in the U.S. The trademarks for the company owned by the Cuban government are not U.S. trademarks and not entitled to U.S. trademark protection. However, the companies at issue here were the companies based in the United States which own common law U.S. trademarks. Therefore, the trademarks in question are U.S. trademarks, the Helms-Burton Act does not apply here, and these U.S. trademarks are protected. Also, testimony of consumers and experts was not necessary to prove confusion.