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GRONK: A Lesson in Trademark Infringement

Rob Gronkowski is commonly known by his nickname GRONK. But did you ever have a brainstorm for a popular t-shirt featuring GRONK or any other Boston athletes' nickname? Well if you did, you should check the trademark database before printing and marketing the t-shirts or you may be subject to a lawsuit. This is exactly the situation of the Defendant in Gronk Nation, LLC v. Sully's Tees, LLC.

On February 18, 2011, Rob Gronkowski and his brothers formed Gronk Nation, LLC, a Florida limited liability company. Gronk Nation acquired the intellectual property rights of the Gronkowski brothers in the use of their names, nicknames, images, pictures, likenesses, and trademarks. Gronk Nation received a Federal Trademark Registration from the U.S. Patent & Trademark Office for GET, GRONK'D and GRONK NATION on December 4, 2012, and for GRONK on December 11, 2012. The statement of first use in commerce on each federal registration is February 18, 2011. Gronk Nation sells t-shirts that bear the term GRONK. It donates its profits to Gronk Nation Youth Foundation, a charitable organization that supports youth athletics.

According to the Complaint, Sully's Tees began selling t-shirts with the word GRONK without a license or permission from the Gronkowski brothers or Gronk Nation. Gronk Nation became aware of the t-shirt sales and served a cease-and-desist letter on Sully's Tees on January 24, 2013. Sully's Tees did not stop selling the GRONK t-shirts. On April 29, 2013, Gronk Nation filed a complaint against Sully's Tees in Federal Court. The complaint alleged trademark infringement in addition to other claims. Sully's Tees filed a motion to dismiss the Complaint for failing to state a claim upon which relief could be granted.

In its motion, Sully Tees argued that it used the term GRONK on t-shirts prior to the registered date of first use and therefore, Gronk Nation had no trademark rights. In opposition, Gronk Nation argued that the use of GRONK on t-shirts created a likelihood of confusion that the Gronkowski brothers or Gronk Nation are associated with or have approved of Sully's Tees products.

Ultimately, the Court found that Gronk Nation's complaint could go forward and denied Sully's Tees motion to dismiss. The Court held:

Whether defendant used the mark on t-shirts prior to the date of first use listed on plaintiff's trademark registration is not the critical inquiry. A trademark does not have to be registered to be protected under the Lanham Act. The registration itself is only prima facie evidence of a valid trademark.

The Gronk Nation case is a reminder to individuals and businesses with inventive marketing ideas to be mindful of the trademark registry and the existence of trademarks that are still protected and not registered. Celebrities, businesses and athletes regularly trademark their nicknames, names and catch phrases. Unauthorized reproduction or use of these marks may lead to legal trouble. Proof of trademark infringement only requires a showing (1) that a mark is entitled to trademark protection, and (2) that the allegedly infringing use is likely to cause consumer confusion.

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