Court of Appeals Upholds Paddletramps Decision

Tim Burke, Manley Burke, tburke@manleyburke.com

The long-running Paddletramps litigation, testing the strength of fraternity and sorority trademarks, appears to be at an end with a significant victory on behalf of the Greek organizations.  On December 6^th the Fifth Circuit United States Court of Appeals upheld the trial court’s decision in the case originally filed by 32 Greek organizations five years ago.¹

Both sides had appealed the trial court’s decision.  Greek groups appealed because the trial court decision refused to permit the recovery of damages for the past use of their trademarks, finding that the Greeks had waited too long to attempt to recover those damages.  The Court of Appeals upheld that decision.

More importantly, looking to the future, the Court of Appeals also upheld the trial court’s decision granting an injunction against Paddletramps, prohibiting its continued use of those trademarks, including the Greek letter combinations, the full names or nicknames of the groups, any crest or coat of arms, seal, flag, badge, emblem or slogan identifiable with any of the Greek groups.  The only exception was that Paddletramps was allowed to continue to utilize LICENSED crest decals of the Greek organizations.  In the future, Paddletramps could use such trademarked properties without violating the court’s order if it entered into license agreements with the Greek groups permitting that.

Dan Shaver, the President of Affinity Consultants who represents many fraternities and sororities in negotiating trademark licensing agreements with vendors, reports that the Paddletramps litigation has benefited fraternities and sororities because it has:

• Confirmed the trademark ownership rights of Greek organizations in a published federal court decision;
• Expanded the traditional definition of a trademark to include any nicknames or symbols that the Greek organizations use in trade;
• Challenged the longest and most recalcitrant infringer selling in Greek industry, and levied a fairly comprehensive injunction against them; and
• Provided a valuable insight that organizations will be vulnerable in the future, if the organizations are slow to enforce trademark rights.

Paddletramps has the option of seeking reconsideration or appealing to the United States Supreme Court.  But such relief is rare and the Court of Appeals decision will, in all likelihood, be the final word.

¹  Abraham v. Alpha Chi Omega, ____ F.3d ___, 20RWL6052376 (2012)