Las Vegas personal injury attorney Steve Dimopoulos likes to use a silver and black color scheme in his commercials, including a new one that features Raiders defensive end Maxx Crosby, two-time UFC light heavyweight champion Jon Jones and Golden Knights center William Karlsson:
Is that ad a little too close in appearance to Raiders’ branding? The NFL thinks so. Dimopoulos thinks not.
And now a court is tasked with answering that question.
Dimopoulos sued NFL Properties, which serves as the licensing arm of the league and teams, on Wednesday in Nevada’s federal district court. The Raiders, which own Raiders trademarks, were also named as a defendant. Dimopoulos demands a declaration that neither the ad nor associated hashtags infringe NFL or Raiders trademarks or trade dress, which is the visual appearance, or distinctive look and feel, of goods.
Dimopoulos says he began airing the ad on TV and the internet on Feb. 12, but 10 days later NFL Properties sent him a cease and desist letter. As summarized by Dimopoulos, the letter demanded he pull the ad immediately, threatened him with a lawsuit and warned him of “heightened legal penalties.” It also accused him of using “hashtags that include various NFL marks, including RAIDERS and RAIDERS NATION, to promote [the law firm’s] services.” The letter instructed Dimopoulos to respond by Wednesday.
In a sense he complied with that demand—by suing.
Dimopoulos raises several arguments. One is that he began to use the silver and black color scheme when he launched his firm in 2012, four years before the Oakland Raiders announced their move to Vegas. This point suggests his selection of colors wasn’t an attempt to draw a connection, since the Raiders weren’t the local team.
Dimopoulos also points out that silver and black are used by other pro teams, including the Los Angeles Kings, San Antonio Spurs and the Chicago White Sox. Further, he notes that Crosby is wearing the law firm’s colors, with Crosby’s name and number 98 appearing on a jersey, but the jersey does not contain any reference to, or logos for, the NFL, Raiders or Nike. Similarly, the ad makes no reference to UFC, the Kings or NHL, with only the law firm logo apparent.
Under trademark law, a key consideration is likelihood of confusion by consumers. Dimopoulos asserts that consumers interested in retaining legal services aren’t going to be confused that the Raiders are somehow connected to his law firm. He asks if use of a silver and black color scheme was likely to trigger confusion, how have multiple teams long used that same scheme?
Dimopoulos adds that he has sponsored sports teams in the Vegas metropolitan area that “wear black and silver color schemes” without issue.
As to alleged use of hashtags containing NFL marks, Dimopoulos disputes that allegation. He also maintains that any use of hashtags did not signal a connection to the NFL or the Raiders, or cause actionable confusion among consumers.
The NFL declined a request for comment and the Raiders did not respond to a request. However, attorneys for both will answer the complaint in the coming weeks and seek its dismissal. Expect the league and Raiders to challenge Dimopoulos’ depiction of facts.
Dimopoulous is represented by Marc Randazza, a prominent intellectual property law and free speech attorney. Judge James Mahan will preside over the case.
(This story has been updated in the penultimate paragraph with the NFL’s declination to comment.)