Paddletramps Trial Ends

Tim Burke, Manley Burke, tburke@manleyburke.com

The long-running Paddletramps trademark litigation¹ is over.  At least until an appeals court finds otherwise.  Both sides achieved some success.

This case was brought by Paddletramps, which had for years been producing and selling paddles with the Greek letters and crests of fraternities and sororities on them.  Thirty-two fraternity and sorority organizations had sought to bar such sales unless Paddletramps entered into a licensing agreement with those groups.  Paddletramps refused to do so and filed suit.

The litigation really involved two issues.  First, did Paddletramps have any liability to the Greek organizations whose trademarked crests and Greek letters had been a source of significant income to Paddletramps during years past.  On that issue, the Greek groups lost.  As the court pointed out, the Paddletramps began operations in the 1960s and had a national presence by 1990, including a national website which began operation in 1997.  The problem for the Greek groups is they did not pursue the infringement issue until 2007, decades after they learned of Paddletramps’ conduct.  As a result, the court found that the Greek groups had sat on their rights for too long to belatedly make a successful claim for damages.

But on the second issue, could Paddletramps continue its conduct, the Greeks prevailed.  While the Greek groups were not entitled to damages for the past actions of Paddletramps, the court did find that the conduct of Paddletramps violated the protected trademark rights of the fraternities and sororities.  Therefore, the court issued a permanent injunction that prohibits Paddletramps from creating or using in its advertising or sales:

• The Greek letter combinations associated with those Greek organizations that were parties to the suit;
• The full names or nicknames associated with those Greek organizations; and
• Any crest, coat of arms, seal, flag, badge, emblem or slogan identifiable with any of the Greek organizations that are parties to the suit, including wood carved crests that had been previously produced and marketed by Paddletramps.

Paddletramps may continue to utilize licensed crest decals of the Greek organizations, may use the full name of Greek organizations to identify those decals to customer and may use wooden crest backing in the outline of the genuine licensed crest decal.

Several lessons can be learned from this litigation.  First and most importantly, when trademark infringements are identified, they should be acted on with deliberate speed.  The infringer should be notified to cease and desist.  If the action continues, litigation may be necessary.

Trademarks are of substantial value.  Colleges earn millions of dollars a year licensing their marks.  Fraternities and sororities have the opportunity to do the same, but if they fail to enforce those rights, that opportunity can be jeopardized.

1  Thomas Kenneth Abraham d/b/a Paddletramps Mfg. Co. v. Alpha Chi Omega, et al., United States District Court, Northern District of Texas, Dallas Division, Case No. 3:08-CV-570-F (Order Granting Various Motions for Judgment on the Verdict and Injunctive Relief, May 7, 2012, advisory clarifying the scope of injunction, June 4, 2012).