The Fightin’ Texas Aggies of Texas A&M University were recently left with no recourse to filing a federal suit against the Indianapolis Colts over a new outbreak of the Colts’ use of A&M’s famous “12th Man” trademark – despite prior assurances by the Colts that the organization would cease infringing use of that name.  The case presents an object lesson on how good faith negotiation often fails to sufficiently protect intellectual property rights in the face of callous disregard by an infringer, requiring diligent follow-through over periods of decades or longer. 

One of many distinctive Texas A&M University traditions, the “12th Man” dates to a 1922 football bowl game in which the underdog Aggies faced that year’s top-ranked team in the nation, Centre College of Danville, Kentucky.  With injuries depleting the already-thin Aggie player ranks, Coach Dana X. Bible recalled a former football squad member that had switched to focus only on basketball, E. King Gill.  Gill was called down from the stands and suited out, fully prepared to substitute for any of the 11 exhausted and injured Aggies on the field – that is, the “12th Man.”  Although he never left the sidelines during the Aggie victory, Gill later expressed a sentiment that has resonated in the hearts and minds of contemporary and subsequent generations of Aggie students:

I wish I could say that I went in and ran for the winning touchdown, but I did not.  I simply stood by in case my team needed me.

In what is now the famous 12th Man tradition, the entire student body stands throughout the duration of all home football games, signifying that they are standing by in case their team needs them.

A&M’s 12th Man tradition has since expanded and gained worldwide recognition in the ensuing century.  In the 1980’s, Coach Jackie Sherrill started a 12th Man kickoff team that subsequent coaches continued, including at least one walk-on (non-scholarship) player selected based on the player’s demonstrated level of determination and hard work at practices.  The Aggies have three federal trademark registrations on the “12th Man” trademark for various merchandise and services.  In 2006, the Seattle Seahawks licensed use of the mark form A&M, resulting in Gill’s story being recounted internationally during the 2014 Superbowl. 

The Indianapolis Colts began using the name “12th Man” at their home stadium in 2006. Despite the Colts’ assurances that infringing use of the name would cease, A&M has had to subsequently police sporadic outbreaks of recurring use by the Colts.  Most recently, the Colts began to again use the name last July in promoting online ticket sales to home games for their current 4-5 season.  A&M sued the Colts for trademark infringement, trademark dilution, unfair competition and false designation of origin in Houston federal court.

In protecting intellectual property rights, infringers will often assure owners of their respect for the owner’s rights and their earnest intent to cease infringement.  Owners, however, must meticulously continue to monitor the infringer’s subsequent activities, since recidivism is as common in intellectual property infringement as in other forms of offenses.