The Big Ten Sues Self-Help Co. for TM Infringement
It’s March, the time for college basketball enthusiasts to revel in the NCAA Men’s Basketball March Madness®, and as many of these enthusiasts know, the madness can happen on and off the court.
In addition to filling out brackets, the Big Ten Conference is filling out paperwork to protect its trademark against infringers, specifically a company named B10xB. The Big Ten Conference filed a complaint in the U.S. District Court for the Eastern District of North Carolina against B10xB and its principal shareholder Cesar L. Rodriguez. The Big Ten Conference alleged Rodriguez’s company infringed on their trademark registrations with a “confusingly similar” name that is used in connection with a domain name, online seminars, training modules and an upcoming merchandise line.
B10xB is an online organization with multiple social media accounts that encourages their members to be “fearless, bolder & more badass.” According to the company’s Facebook page, the moniker B10xB stands for “Be Ten Times Bolder”. Their mission statement is- “B10xB = Be Ten Times Bolder! Our mission is to help you transform you into the ten times bolder version of yourself you were born to be so you can dominate, conquer, and accomplish anything you go for … without feeling fear, anxiety or apprehension.”
The Big Ten Conference, which has operated under the name “Big Ten” since 1917, was alerted to Rodriguez’s trademark application in February of 2016, when he filed for the name B10xB to appear on clothing and merchandise such as hats, hoodies, pants, rubber bracelets, and other clothing articles.
The Big Ten Conference alleged that the defendants knowingly and intentionally infringed on their trademarks which has led to consumer confusion as to the Big Ten’s affiliation with B10xB. The Big Ten has tried to contact Rodriguez multiple times and has “gone to great lengths to resolve this matter amicably.” These efforts included emails and five cease and desist letters, one of which was sent as early as April 13, 2016. The other four were sent in May, June, July, and November of 2016, with the final letter containing a drafted complaint. The original letter requested Rodriguez abandon the trademark application and cease use of any and all B10xB marks in connection with merchandise and services. It also requested the transfer of the website domain to the Big Ten.
Although Rodriguez did not respond to the letters, he did acknowledge the attempts to contact him via email. He said the emails he received looked like spam and he did not open them as to avoid the potential for a virus to his computer. He also told the Big Ten his “attorney’s [sic] will be in touch with you regarding this matter.” The complaint stated that Rodriguez has continually avoided contact and “no attorneys for defendants ever contacted counsel for the conference, nor did Mr. Rodriguez provide their contact information.”
The Big Ten Conference feels that the ”[d]efendants’ unauthorized uses of the Big Ten Marks are likely to cause, have caused, and continue to cause dilution of the famous Big Ten Marks by eroding the public’s exclusive association of the famous Big Ten Marks with the Conference and by lessening the capacity of the famous Big Ten Marks to identify and distinguish the Conference’s goods and services.”
The Big Ten Conference is seeking action for an injunction and monetary damages due to Rodriguez’s willful infringement on the trademark.
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