On Monday, October 7, 2013, the United States Supreme Court issued orders denying Paddle Tramps Manufacturing Co.’s petition for writ of certiorari. As a result, the injunction, issued by the Northern District of Texas and affirmed by the 5th Circuit Court of Appeals, continues to stand. The injunction prevents Paddle Tramps from utilizing various Greek organizations’ trademarks in certain forms of marketing, sales and advertising.

The case between Paddle Tramps and 32 Greek organizations lasted for seven years and at considerable expense to all parties involved. In the end, the Greek organizations achieved a legal victory affirming that their trademarks were strong and distinct and that their licensing programs are valid. In the process, Paddle Tramps was found guilty of trademark infringement, unfair competition, dilution (under Texas law) and, accordingly, is prevented from commercial use (including advertising) of various Greek organizations’ names, nicknames, crests, Greek letter combinations and other symbols.

This decision marks the first time a Greek Trademark lawsuit reached the Supreme Court of the United States. While the Greek organizations had every intention of avoiding the long and protracted legal battle, they were principally aligned that all trademark infringement must be addressed and that their trademark rights deserve a vigorous defense.

On April 26, 2011 the United States District Court for the Northern District of Texas, granted in part a Motion for Summary Judgment in favor of 32 Greek Organizations. The Court found the plaintiff, Paddle Tramps, liable for trademark infringement, unfair competition, and trademark dilution.

Several key factors make this case unique and particularly important for Greek organizations. The Court affirmed the fact that specific combinations of Greek letters are distinctive and protectable marks. The Court also determined that, in addition to Greek letters and English spellings, the Greek organizations’ nicknames and symbols are ‘indicators of origin’ as well and are therefore equally protectable trademarks. The Court’s analysis concluded that the organizations’ various word marks and symbols are entitled to legal protection because they are used to capitalize on a consumer’s affinity to a specific Greek organization. The Greek trademark, in other words, serves as the ‘triggering mechanism’ for the sale.

Moreover, the ruling was not limited to exact replication of official trademarks. Paddle Tramps’ use of very similar (but not identical) marks to those of the Greek organizations was found by the Court to diminish the distinctiveness of the official trademarks. In this respect, the Court again ruled in favor of the Greek organizations and Paddle Tramps was found liable for trademark dilution.

This case was a monumental victory for Greek organizations because it vindicated their claim to their trademark rights and more specifically confirmed what can be claimed as a legally protected mark.

On December 31, 2007, national and international Greek-letter organizations filed a joint lawsuit in the United States District Court for the Southern District of Florida against Greek product manufacturers and marketers Paddle Tramps Mfg. Co, The Brown Bag, joeToga, Taymark, Inc., Tervis Tumbler Company and Rah Rah Company. The charges included trademark infringement and both federal and common law unfair competition. The lawsuit was filed as a result of continued, unauthorized use of the Greek organizations’ protected trademarks by the six defendants.

The lawsuit was filed in the same court that previously ruled in favor of Greek trademark rights. It was determined by the Court during this previous case that the defendant violated state and federal trademark laws when it continued to sell branded products outside of license agreements with various Greek organizations (Sigma Chi Fraternity, et al v. Sethscot Collection, et al, Case No. 98-2102 CIV-SEITZ). The Court issued an injunction against the defendant and required them to pay undisclosed damages to the plaintiffs.

The size and breadth of this joint litigation illustrated that Greek organizations are aligned and focused on protecting the individual and collective use of their marks. Shortly after filing, five of the six original defendants settled out of court, acknowledging the Greek organizations’ trademark rights. The remaining defendant, Paddle Tramps Mfg. Co., countersued in the Northern District of Texas and continued litigation.

The United States District Court for the Southern District of Indiana on October 25, 2004 ruled without hesitancy in favor of six Greek organizations in a case against Pure Country, determining that Pure Country violated federal trademark laws through trademark infringement and unfair competition. The Court also found Pure Country in breach of contracts it previously held with the Greek organizations.

In this case, the Court held that ‘likelihood of customer confusion’ was a key factor in determining the existence of trademark infringement. In this way, yet again, it was shown that the Greek organization’s trademarks served as the triggering mechanism for purchase, and created customer confusion as to the authenticity of the product (i.e. customers purchasing the products would likely assume they were official, approved products).

Pure Country’s guilt was compounded by the fact that they were formerly licensed with the Plaintiff Greek organizations. These agreements confirmed Pure Country’s previous knowledge of the Greek organizations’ trademark rights. The continued use of the marks by Pure Country after the agreements had been terminated therefore represented a breach of contract causing the Court to order Pure Country to submit awards to the Greek organizations for the subsequent damages incurred.

This case served to bolster the legitimacy of the Greek organizations’ licensing programs by underscoring the fact that customers who buy products with their organizations’ trademarks on them, assume those products are authentic and approved. If a vendor produces, markets, and/or sells products that include trademark(s) without a license, they are seen as confusing the customer with counterfeit goods.

Ultimately, this case reinforced the legal precedents regarding trademark infringement and has since provided crucial and continued support for Greek organizations’ licensing programs.

A summary judgment ruling in favor of Sigma Chi was awarded by the United States District Court for the Southern District of Florida on April 7, 2000 in a trademark case against Defendant Taylor Corporation. The Court found Taylor Corporation guilty of trademark infringement and unfair competition. The Court also found injunctive relief was warranted.

This case represents a significant victory for Greek organizations because it established a clear legal precedence regarding trademark infringement – specifically as it relates to consent for a third party to utilize the marks and the likelihood of confusion as to the source or endorsing party of the goods/services. The Court determined that a member’s rights to an organization’s marks are limited – “members can only acquire merchandise bearing those marks from licensed vendors”. In other words, a member of a Greek organization cannot grant commercial use of his or her organization’s trademarks – that right is reserved solely for the trademark owner, the inter/national organization (headquarters). Furthermore, a vendor is prohibited from claiming consent and/or the validity of a disclaimer once they have been given notice that they are not authorized to use an organization’s marks; Taylor Corporation received such notice on September 17, 1997.

The Court also addressed the issue of the likelihood of confusion as to the source of the products and again ruled in favor of Sigma Chi. It was determined that the intent of Taylor Corporation was to “derive benefit from the reputation” associated with the source of the original mark – Sigma Chi Fraternity. In other words, the Greek organization’s trademarks served as the triggering mechanism for purchase, and created customer confusion as to the authenticity of the product. This observation further supported the Court’s ruling in favor of Sigma Chi.

The 2000 Southern District of Florida ruling was a monumental step for Greek organizations in asserting exclusive claim to, and ownership of, their intellectual property.