Two 'Greek Freak' Lawsuits Over The Same Trademark Lead To Different Outcomes

• Published date: 21 September 2021
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, Trademark, Sport
• Law Firm: Wilson Elser Moskowitz Edelman & Dicker LLP
• Author: Ms Jana S. Farmer and Adam R. Bialek

The owner of the trademark Greek Freak', 2021 NBA Finals MVP Giannis Antetokounmpo, received different outcomes in two seemingly similar trademark infringement actions heard by the U.S. District Court for the Southern District of New York. At first glance, the facts are nearly identical: defendants sold infringing products, received cease-and-desist letters, and failed to stop the infringing activity; subsequently, default judgments were issued against them after their respective failures to answer the complaints. Inquest hearings to decide the amount of money due on claims for damages were set in both cases. Yet, only one resulted in an award of statutory damages.

How may the differing outcomes be explained?

Background

Antetokounmpo is a professional basketball player of Greek-Nigerian descent, acclaimed for his skill on the basketball court, which twice garnered him the NBA Most Valuable Player award and earned him MVP honors for the 2021 NBA Finals. He registered his nickname, 'Greek Freak,' as a trademark on the federal trademark principal registry in international classes 018 (Backpacks) and 025 (Shirts, t-shirts, sweatshirts, hooded sweatshirts, jackets, hooded jackets, sports jerseys, socks, warm-up suits, caps, hats). He also applied for registration of a clever spelling variation of the nickname, 'Greek Fr34k,' which incorporates his NBA jersey number. This application, covering nine different international classes, seeks protection for men's self-care products, apparel, snack foods, sports drinks and others, including a class 35 recitation for 'promoting the goods and/or services of others through the issuance of product endorsements.'

Antetokounmpo distributes merchandise under his trademark online and via retail stores in the United States. He has also entered into licensing and endorsement agreements with third parties to use his mark in commerce for a variety of goods. In July 2020, he announced 'his cooperation with GFG (Greek from Greece) Bakery-Café to advertise, promote and sponsor [Greek inspired] products of a brand called 776 Deluxe,' Among other products, GFG sells a line of gourmet salts, herbs and spices. An announcement on the 776deluxe.com website contains a headline, '[t]he Giannis Antetokounmpo family and GFG join forces to explore the Greek taste' and further references GFG's cooperation with Antetokounmpo.

The Lawsuits

The first lawsuit, captioned Antetokounmpo v. Searcy (USDC SDNY 20-CV-5055), involved the sale of a variety...