National Football League Properties v. New Jersey Giants

The New York Giants (club) (plaintiff), a member of the National Football League (NFL), moved from New York to New Jersey in 1976 but kept New York in its name after the move. The club owned service-mark rights in the words Giants and New York Giants. NFL Properties, Inc. (Properties) (plaintiff) was the NFL’s marketing arm. Starting in 1982, the New Jersey Giants, Inc. (NJG) (defendant) sold clothing bearing the mark “New Jersey GIANTS,” with the word GIANTS in large print, and most of the NJG’s products used the same dominant element as the club’s products. The NJG’s products competed with the club’s products. The NJG did not have a license from Properties to use the “Giants” mark. In 1984, Properties sent letters to the NJG demanding that the NJG cease and desist from using the “Giants” mark. The NJG did not respond to these letters but instead increased its use of the “Giants” mark. The club and Properties sued the NJG for unfair competition in violation of § 43(a) of the Lanham Act by falsely designating the origin of the NJG’s products and falsely describing the source, sponsorship, or approval of the NJG’s products by the club or the NFL. Per the club and Properties, consumers were likely to be confused by the NJG’s products because (1) the NJG’s mark was similar to the club’s mark; (2) the club’s mark was strong due to extensive media and commercial usage; (3) the club’s and the NJG’s apparel products were of a similar type and price; (4) survey evidence established that NFL fans actually were confused as to the source or origin of the NJG’s products; and (5) the NJG’s principals hoped to sell the NJG’s mark to the club, intended that consumers be confused, and acted in bad faith in not responding to the cease-and-desist letters.