Young v. Vannerson

• Decision Date: 27 April 2009
• Docket Number: Civil Action No. H-08-CV-3649.
• Citation: 612 F.Supp.2d 829
• Parties: Vincent Paul YOUNG, Jr., et al., Plaintiffs, v. Rodney D. VANNERSON, et al., Defendants.
• Court: U.S. District Court — Southern District of Texas

612 F.Supp.2d 829

Vincent Paul YOUNG, Jr., et al., Plaintiffs, v. Rodney D. VANNERSON, et al., Defendants.

Civil Action No. H-08-CV-3649.

United States District Court, S.D. Texas, Houston Division.

April 27, 2009.

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Delphine M. James, Attorney at Law, Houston, TX, for Plaintiffs.

Kent A. Rowald, Law Offices of Kent A. Rowald, P.C., Tomball, TX, for Defendants.

MEMORANDUM AND OPINION

LEE H. ROSENTHAL, District Judge.

This is a trademark dispute over rights to the marks "VY" and "INVINCEABLE." The plaintiffs, Vincent Paul Young, Jr. and Vince Young, Inc., sued Rodney D. Vannerson, Enos Cabell, Tom Roberson, and the joint venture of "Three Friends," alleging trademark infringement and related causes of action under the Lanham Act, 15 U.S.C. § 1051 et seq., and Texas state law. (Docket Entry No. 1). Young, a professional football player, asserts that he is widely known by his initials—"VY"—and nickname—"Invinceable." Vannerson filed intent-to-use trademark applications with the United States Patent and Trademark Office to use the marks VY and INVINCEABLE for a variety of commercial products. Vannerson formed a joint venture, Three Friends, with Cabell and Roberson, to share ownership of the potential rights, expenses, and proceeds associated with these marks. In this suit, the plaintiffs assert that the defendants have engaged in substantial preparations to sell products using these marks. Young asserts that he is a senior user of the marks and has a common-law ownership interest in the trademark rights. The plaintiffs seek a permanent injunction and a declaration that they have the exclusive right to use the marks VY and INVINCEABLE, that their use of these marks does not infringe any possible rights of the defendants, and that the defendants have no rights in these marks.¹

The defendants have moved to dismiss for lack of subject-matter jurisdiction and for failure to state a claim upon which relief may be granted. (Docket Entry No. 12). The plaintiffs responded, (Docket Entry No. 14), and filed a supplemental response, (Docket Entry No. 23).

Based on a careful review of the pleadings, the motion and responses, and the applicable law, this court denies the defendants' motions to dismiss. The reasons are explained in detail below.

I. Background

The facts are set out in the amended complaint. Young is a professional football player for the National Football League's ("NFL") Tennessee Titans. (Docket Entry No. 16, at ¶ 11). He played high school football in Houston, Texas and was named National Player of the Year by Student Sports Magazine in 2001. (Id., at ¶ 19). Young played college football at the University of Texas ("UT") from 2002 to 2006. As a collegiate athlete, Young licensed his name and likeness to UT "to promote their entertainment services and football program." (Id., at ¶ 13). Young asserts that he became widely known as "VY" and "INVINCEABLE" during his "highly publicized collegiate football career." (Id., at ¶¶ 17-20). He asserts that UT protected his name and likeness by sending cease-and-desist letters to entities using the names "VY" and "INVINCEABLE." (Id., at ¶ 15). In 2005, his final season at UT, Young received several national awards, including college player of the year and the Davey O'Brien Quarterback Award, and was named a Heisman Trophy finalist and runner-up. (Id., at ¶ 21). On January 4, 2006, Young led UT to a BCS National Championship with a victory in the Rose Bowl. (Id., at ¶ 23). Young scored the winning touchdown, was named the Rose Bowl's Most Valuable Player, and was featured on the cover of a commemorative issue of Sports Illustrated. (Id.). After being selected by the Titans as the third overall pick in the 2006 NFL draft, Young was named the NFL's Offensive Rookie of the Year. (Id., at ¶ 24). The plaintiffs assert that Young "has become one of the most recognizable figures in professional football." (Id.). He is featured on the cover of "Madden 2008," a video game produced by EA Sports. (Id.). Young "currently has endorsement contracts wherein he has licensed his name and likeness," including his "proprietary rights to his nicknames and his abbreviated name," to various entities, including Vincent Young, Inc. (Id., at ¶ 16).

On January 5, 2006, one day after the Rose Bowl, Vannerson filed four intent-to-use trademark applications relating to the marks "VY" and "INVINCEABLE." (Id., at ¶ 25). In application 78/786,063, Vannerson stated his intent to use VY for "computer games, electronic games, video games" in International Class 009 and for "clothing" in International Class 025. (Id., at ¶ 27). Application 78/786,883 stated that Vannerson intended to use VY for "posters, photographs, pictures, and decals" in International Class 016 and for "candy" in International Class 030. (Id., at ¶ 29). Application 78/786,069 was to use INVINCEABLE for "computer games, electronic games, video games, computer program games, computer game software, electronic game programs, electronic game software, [and] video game software" in International Class 009. (Id., at ¶ 26). And Application 78/786,882 stated that Vannerson intended to use INVINCEABLE for "computer games, electronic games, [and] video games" in International Class 009 and for "clothing" in International Class 025. (Id., at ¶ 28). The applications all stated that the applicant entity type was "individual." (Id., at ¶ 42).

On the same day that Vannerson filed the trademark applications, he formed "Three Friends" with defendants Enos Cabell and Tom Roberson. (Id., at ¶ 39). Vannerson, Cabell, and Roberson are all residents of the greater Houston metropolitan area. (Id., at ¶¶ 3-5). Their agreement stated that "the Three Friends consider this agreement a joint venture even though all filings with the U.S. Patent and Trademark Office were made and will remain in the name of Rodney Vannerson, as an individual." (Id., at ¶ 39). Under the agreement, "[a]ll expenses associated with the trademark protection and market awareness of the mark along with all proceeds generated from the use and/or sale of the mark will be shared between the Three Friends and their Attorney based on the following rights of ownership; Enos Cabell 25% Ownership, Tom Roberson 25% Ownership, Rodney Vannerson, 50% Ownership." (Id.). Vannerson acknowledged that he did not own the marks at issue when he filed the trademark applications. (Id., at ¶ 40).

The plaintiffs assert that before Vannerson filed the trademark applications, Young was so widely known by the names "VY" and "Invinceable" that these names "unmistakeably [sic] point to" Vince Young. (Id., at ¶ 30). The plaintiffs assert that the names VY and INVINCEABLE "have been used in commerce and/or in a manner analogous to use which created [Young's] proprietary rights." (Id., at ¶ 31). On July 24, 2006, Young applied for a trademark to use "VY" for clothing and sportswear. On November 19, 2007, Vincent Young, Inc. applied for a trademark on a shield logo that incorporates the letters "VY" and the words "V. Young." (Id., at ¶ 33). The plaintiffs established a website to sell products using the "VY" shield logo and the "V. Young" mark, including computer games, video games, photographs, trading cards, clothing, footwear, toys, figurines, candy, and food. (Id., at ¶ 32). Young has an endorsement contract with the footwear company Reebok, which, according to the plaintiffs, currently sells "products with a VY logo that is confusingly similar to the marketing logo developed by defendants." (Docket Entry No. 14, at 5).

The plaintiffs allege that the defendants "have expended great physical and financial resources to develop, to market[,] and to brand plaintiff['s] VY image." (Id., at ¶ 49). According to the plaintiffs, the defendants have "contacted several manufacturers" and "produce[d] samples of various products for use with the VY and Invinceable marks." (Id., at ¶ 36). The plaintiffs allege that the defendants have produced T-shirts and decals using a VY logo similar to Vincent Young, Inc.'s VY shield. (Id.). Both logos have a "three pointed enclosed figure with the letters VY contained therein." (Id., at ¶ 34). The plaintiffs allege that the defendants have "approached organizations to develop marketing strategies and are `testing the market' with several different types of products using the marks." (Id., at ¶ 36). The plaintiffs assert that the defendants plan to license the marks to "individuals who can use [them]." (Id.). The plaintiffs point to Vannerson's deposition testimony that the defendants "created samples to directly license to plaintiff VY for use in commerce." (Id.).

In this suit, the plaintiffs allege that Vannerson filed the intent-to-use applications for the purpose of creating a false connection with Young and of interfering with the plaintiffs' proprietary rights to the VY and INVINCEABLE marks. The plaintiffs allege that Vannerson violated the Lanham Act by failing to obtain Young's consent before registering a trademark that "consists of a name, portrait, or signature identifying a particular living individual." The plaintiffs allege that Vannerson did not have a bona fide intent to use the VY and INVINCEABLE marks in commerce when he filed the trademark applications, as required by the Lanham Act. The plaintiffs allege that the defendants' conduct, including applying for trademarks on the VY and INVINCEABLE marks, has caused damage to, and interfered with, Young's product endorsements.

Young filed an opposition proceeding with the Trademark Trial and Appeal Board ("TTAB") of the Patent and Trade-mark Office on April 26, 2007. Young is opposing Vannerson's intent-to-use trademark applications for the VY and INVINCEABLE marks. That proceeding is pending. The plaintiffs filed this lawsuit on December 12, 2008 seeking relief that includes an injunction and declaratory judgment. The motion to...