By Nicole D. Prysby, J.D.
The trademark creator’s alleged product market, "products bearing the number 12 associated with the Seahawks by color or other indicia" was too narrow and its tying claim was time-barred.
Monopolization, restraint of trade, and tying claims against the Seattle Seahawks brought by the creator of the VOLUME 12 trademark failed. PBTM, LLC, created the VOLUME 12 and LEGION OF BOOM trademarks, which it licensed in part to the Seahawks. PBTM alleged that the Seahawks included language in an agreement licensing the use of LEGION OF BOOM mark that PBTM did not agree to. The clause required the Seahawks’ consent to certain uses of the VOLUME 12 mark. PBTM’s monopolization claims failed for lack of a relevant product market. PBTM alleged a product market of "products bearing the number 12 associated with the Seahawks by color or other indicia" but the court held that a sub-market defined by a single number associated with a single team was too narrow. PBTM’s tying claim failed as time-barred, and even if the claim had been timely, it would have failed because PBTM conceded that it accepted the condition. The bulk of PBTM’s breach of contract claims also failed as time-barred, with the exception the Seahawk’s refusals of consent to use the VOLUME 12 trademarks in 2017 and 2018 and oppositions the Seahawks filed at the Trademark Trial and Appeal Board (TTAB) in 2018 and 2019 (PBTM LLC v. Football Northwest LLC, January 5, 2021, Martinez, R.).
PBTM developed and used markers incorporating the number 12 with the word "VOLUME" or "V" in reference to Seattle Seahawks fans. The number "12" refers to the Twelfth Man, a term used in American football to honor fans as the twelfth member of the team, while "volume" references Seahawks fans’ record-breaking crowd roar at CenturyLink Field, the team’s home stadium.
In 2011, the Football Northwest LLC (the Seahawks) and PBTM entered into a license agreement (the 2011 Agreement) that granted the Seahawks exclusive rights to use VOLUME 12. In 2014, PBTM and the Seahawks entered into negotiations for purchase of the VOLUME 12 trademark. The Seahawks declined to purchase the trademark. The negotiations then turned to another PBTM trademark: a stylized design of the phrase "LEGION OF BOOM." The parties signed a purchase agreement for the trademark (the LEGION OF BOOM Agreement). PBTM claimed that parties did not discuss the VOLUME 12 mark during negotiations and was therefore surprised to see later drafts of the LEGION OF BOOM Agreement that included clauses about VOLUME 12. PBTM claimed that the parties agreed to modify the language, but that it was not modified and PBTM signed the agreement without realizing that the changes had not been made. PBTM protested, but the Seahawks refused to make any changes to make the Seahawks consent to PBTM’s use of the VOLUME 12 mark non-mandatory. PBTM also claimed that since execution of the LEGION OF BOOM Agreement, the Seahawks and NFL Properties, LLC (NFLP) have taken challenges at the U.S. Patent and Trademark Office (USPTO) to prevent PBTM from using its Volume 12 and V12 trademarks.
PBTM alleged contract-related and federal and state antitrust violations in the form of unlawful restraint of trade, unlawful monopolization and/or attempted monopolization, and unlawful tying. The defendants moved to dismiss all claims.
Breach of contract claims. PBTM alleged that the Seahawks breached the LEGION OF BOOM Agreement by failing to add the "not mandatory" language as the Seahawks initially promised and by refusing to grant PBTM permission to use VOLUME 12 in association with the Seahawks. PBTM’s reformation claim failed as time-barred, as did most of PBTM’s claims for breach of the duty of good faith and fair dealing, with the exception of refusals of consent to use the VOLUME 12 trademarks and oppositions filed at the TTAB in 2017-2019. The claim premised on the Seahawks’ refusal to grant PBTM permission to use VOLUME 12 in association with the Seahawks was facially implausible, as the agreement contained no mention of any duty on the part of the Seahawks to grant permission to use the marks. Claims that the Seahawks breached provisions in the 2011 agreement after the 2014 LEGION OF BOOM agreement was executed also failed, as the terms in the 2014 agreement were inconsistent with those in the 2011 agreement.
Antitrust claims. PBTM pleaded sufficient facts to allege that the Seahawks’ opposition filed at the TTAB was objectively baseless. The court also concluded that the claims were not time-barred, even though the LEGION OF BOOM agreement was executed outside the limitations period. The continuing violation doctrine applied because of the Seahawks’ recent efforts to enforce the LEGION OF BOOM Agreement, including filing the 2019 oppositions with the TTAB.
However, PBTM’s restraint of trade and monopolization claims failed for lack of a relevant product market. PBTM alleged a relevant product market of "products bearing the number 12 associated with the Seahawks by color or other indicia." The court held that a sub-market defined by a single number associated with a single team was too narrow. PBTM’s claim that the number "12" holds particular historical significance was insufficient to plead a sub-market—PBTM offered only the conclusory assertion that being part of the Seahawks "12s" cannot be accomplished without buying a 12-related product, but failed to explain why products with the Seahawks logo, associated with other meaningful numbers or symbols for Seahawks fans are not reasonably interchangeable.
PBTM’s tying claim, related to the 2014 LEGION OF BOOM agreement, failed as time-barred. The alleged tying arrangement was complete in 2014 when the parties executed the agreement—no continuing violation was inflicted through repeated coercion of PBTM to trade its rights to the V12 family of marks for sale of the LEGION OF BOOM mark. Given that the alleged tying arrangement was completed in 2014 with execution of the LEGION OF BOOM Agreement, PBTM’s tying claim was time-barred and even if the claim had been timely, it would have failed because PBTM conceded that it accepted the condition. Although PBTM claimed that Seahawks’ management pressured it to sign the agreement immediately, mere sales pressure does not constitute coercion.
This case is No. C19-2081-RSM.
Attorneys: Anthony M. Verna (Verna Law, P.C.) for PBTM LLC. Benjamin J. Hodges (Foster Garvey PC) for Football Northwest LLC.
Companies: PBTM LLC; Football Northwest LLC
MainStory: TopStory Antitrust GCNNews WashingtonNews
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