The Dimopoulos Law Group, a Las Vegas-based personal injury law firm, filed a lawsuit in the United States District of Nevada against the National Football League (“NFL”) and the Las Vegas Raiders on March 1, 2023. After receiving a cease-and-desist letter from the NFL and the Raiders, the law firm is seeking a declaration of relief establishing that its Super Bowl advertisement did not infringe on any trademarks or trade dress owned by the NFL or the Raiders. The NFL has until May 5, 2023, to file an answer to Dimopoulos’ complaint.
Like me, if you’re from Las Vegas, you probably know the Dimopoulos Law Group from its elaborate, sometimes cringe-worthy, television commercials and billboards, often appearing in dark and muted colors that market their legal services. The commercials often highlight the owner and lead attorney, Steve Dimopoulos, walking in slow-motion or arguing in a courtroom.
The Dimopoulos Law Group aired a television advertisement on February 12, 2023 during the Super Bowl. The Super Bowl television commercial in dispute featured prominent Las Vegas athletes wearing black and silver uniforms. According to its complaint, Dimopoulos adopted the black and silver color scheme in 2012 to market its legal services in Nevada, which pre-dates the Raiders’ move from Oakland, California, to Las Vegas, Nevada, in 2020 by eight years. The Dimopoulos Law Group continues to air the television commercial locally in Las Vegas.
The trade dress claim
At the core of this dispute is the NFL’s assertion of trade dress protection in the color scheme of the Raider’s football uniforms. Trade dress protects the visual appearance and overall image of a product or service used to identify and distinguish it from other products or services in the marketplace. Like trademarks, trade dress rights can exist without registration with the United States Trademark Office (USPTO). However, common law trade dress rights are more difficult to enforce without a USPTO registration as it may be more challenging to prove that a particular product or service’s visual elements have acquired secondary meaning in the marketplace.
Currently, the NFL and Raiders do not have a trade dress registration issued by the USPTO for the color schemes of their uniforms. The Raider’s pending trade dress application was filed on April 5, 2022, but has faced opposition from the USPTO resulting in an initial refusal. The timing of this office action is not particularly helpful for the NFL either, as it was issued on February 16, 2023—just four days after the Super Bowl and Dimopoulos’ commercial aired.
Likelihood of confusion
Even if the NFL can attain a trade dress registration from the USPTO, it must demonstrate that the black and silver uniforms that Dimopoulos used in its Super Bowl ad are confusingly similar to the Raider’s uniforms. The federal court will evaluate eight factors, known as the Sleekcraft factors, to determine if there is a likelihood of confusion. These factors include:
- Strength or Weakness of the Plaintiff’s Mark;
- Defendant’s Use of the Mark;
- The Similarity of Plaintiff’s and Defendant’s Marks;
- Actual Confusion;
- Defendant’s Intent;
- Marketing/Advertising Channels;
- Consumer’s Degree of Care; and
- Product Line Expansion
Whether the uniforms used in the Dimopoulos commercial are similar to the Raider’s uniforms is only one of eight factors the court must consider. For example, the court will have to consider the differences in the services offered between the parties. In this case, Dimopoulos Law Group is a personal injury firm using the alleged trade dress to market the legal services it provides in the Las Vegas area. In stark contrast, the NFL and Raiders offer entertainment and related services in athletics.
However, Dimopoulos’ inclusion of Maxx Crosby—a defensive lineman for the Raiders—wearing the black and silver uniform in the commercial could increase the likelihood of consumer confusion. Arguably, by coupling a current Raider’s player with the black and silver uniforms, a viewer could associate the Raiders with the Las Vegas personal injury firm.
As the case evolves and more facts are uncovered, we will better understand how the court may be inclined to decide on the merits of the NFL’s trade dress infringement claim.
Written by Caleb L. Green, Esq., Associate Attorney, Dickinson Wright