Growing up close to Pittsburgh, PA, I knew at a very young age of the Terrible Towel®. The traditionally gold or black colored towel with distinctive black or gold lettering is used by Pittsburgh Steelers fans to rally the team. Go to any Steelers game and almost every Steelers fan, as well as the players, will be waving one in the air. Myron Cope (“Cope”), a popular sports broadcaster, created The Terrible Towel® during the playoffs back in the 1975. The Steelers went on to win the Super Bowl X over the Dallas Cowboys. Many fans are superstitious and say the towel provided the magic touch encouraging the win. Its use has been a staple at Steelers games, both home and away, for over 40 years.
The popularity of the towel caused others to jump on the bandwagon touting other “Terrible” merchandise. Time In, LLC (“Time In”) started selling Terrible Masks in July of 2020. These masks used the same coloring and distinctive lettering as those on the Terrible Towel®. The Eamon Foundation (“Eamon”) recently brought and settled a trademark infringement lawsuit against Time In based on the sale of the masks.
Eamon currently owns 8 active “Terrible” trademark registrations (“Terrible marks”) for various products currently owned by The Eamon Foundation. Cope gifted and assigned his rights in any trademarks for The Terrible Towel’s products to the Allegheny Valley School Foundation. The Allegheny Valley School Foundation, now The Eamon Foundation, supports the Allegheny Valley School. The school serves intellectually and developmentally disabled people. The Allegheny Valley School itself still receives a portion of the products proceeds. The Eamon Foundation licensed the trademarks exclusively to the Pittsburgh Steelers.
Eamon alleges Time In began selling products known as “The Terrible Mask” as well as related products such as gaiters bearing the same stylistic lettering as the Terrible marks owned by Eamon at the beginning of July. Eamon sent a cease and desist letter to Time In on July 13th demanding Time In cease all promotion, marketing, and sales of the masks. Below are images of one of the Terrible masks as well as an exemplary Terrible Towel.
Time In responded that owner Charles Goldberg (“Goldberg”) entered into a written “non-interference” agreement with Cope in 1978. That agreement purportedly stated that Goldberg would not challenge Cope’s rights to make and sell the Terrible Towel®. The agreement also purportedly stated Goldberg has the right to sell any other products bearing the word “terrible”. Unfortunately, neither Time In nor Goldberg produced a copy of this purported agreement. Similarly, Eamon did not possess a copy of the purported agreement.
Lawsuit and Settlement
On August 21, 2020 Eamon sued time In and Charles Goldberg for trademark infringement as well as several other charges. Eamon asked for an injunction against Time In from selling or creating any Terrible products. They also requested trebled damages, attorney’s fees, and court costs. On August 28th, the parties reached a settlement agreement. In the agreement, Time In agreed to cease selling and advertising its “Terrible Masks” and any other products using Eamon’s trademarks. Time In also agrees to withdraw its trademark application for the masks. As of today, the masks are no longer available on the company’s website. The trademark application is still active with an Office Action issued on July 13th citing one of the Terrible Marks against it in a likelihood of confusion rejection.
Interestingly, Eamon filed its own trademark application for The Terrible Towel for face coverings on August 4, 2020. This filing was likely done to reduce any ambiguity and stop others in the future from trying to leverage the goodwill of its Terrible marks.
Eamon successfully defended its Terrible marks against infringers at least twice in the past. In 2011, Eamon successfully stopped the sale of a “Terrible T-shirt”. Similarly, in 2012, Eamon stopped the sale of a Terrible Towel using Italian language.
The standard for trademark infringement is whether the marks are so similar that there is a likelihood of confusion as to the source of the goods/services by the average consumer. In the current case, given the similarity in colors and stylized lettering, as well as the widespread use, recognition, and strength of the Terrible marks, a consumer would likely believe that the masks were provided by the same entity providing the towels. As such, Eamon had a strong case for willful trademark infringement. Eamon’s main goal was likely to stop the infringement and any subsequent dilution of its Terrible marks. As such, settlement is preferred to trial. Settlement saves considerable time and resources compared to trial, particularly where the other party stops the infringement and agrees to refrain from selling or promoting infringing products in the future.