Shaquille O’Neal wins court victory in trademark dispute

Retired NBA player Shaquille O’Neal has scored one more victory — this one in a federal trademark lawsuit in Las Vegas.

O’Neal’s licensing company last year sued Arizona company True Fan Logo Inc., Michael D. Calmese of Phoenix and others in a dispute dating to O’Neal’s playing days for the Phoenix Suns.

In the lawsuit, O'Neal's company claimed the defendants had opened an online store called "Shaqtus Orange Clothing Co." that sold "Shaqtus" apparel and collectibles.

Representatives for O’Neal contended the product's names infringed on his rights because in Phoenix he was known as "The Big Cactus" and "The Big Shaqtus."

The suit was filed in Las Vegas because the defendants’ company was incorporated in Nevada.

The suit said that since O’Neal was the No. 1 pick in the NBA draft in 1992, he'd become one of the greatest players of all time and that his Shaq trademarks have significant value, having been licensed by such companies as Reebok, Radio Shack and 24 Hour Fitness.

Calmese denied the infringement allegations, saying O’Neal gave him and the other defendants implied consent to use the "Shaqtus" name when he signed a "Shaqtus" T-shirt, posed for photos with company officials and wished the defendants good luck.

In closing the lawsuit last week in favor of O’Neal’s company, U.S District Judge Kent Dawson entered judgment for the firm, Mine O’ Mine Inc., against Calmese and True Fan Logo for trademark infringement and unfair competition.

He issued an injunction barring the defendants from using the "Shaqtus" mark and the website domain names shaqtus.com, shaqtus.net "and any other marks or domain names confusingly similar to any of the 'Shaq'" trademarks as spelled out in the lawsuit.

No financial damages were awarded.

In a summary judgment ruling this summer clearing the way for closure of the case, Dawson found "Calmese’s entire Shaqtus venture began only after O’Neal began playing for the Phoenix Suns and was dubbed 'Shaqtus'" by sportswriters and others.

The judge found Calmese had created a character for video clips using a "Shaqtus" image.

"The Shaqtus took the form of a cactus with the facial expression of a man wearing an orange basketball jersey bearing the name 'Phoenix Shaqtus’ and the number 32 and bouncing a basketball,’’ the judge found, noting 32 was O’Neal’s number for the Suns and that he wore an orange jersey for the team.

At some point there was discussion by Calmese about creation of a "Shaqtusclaus" as part of his business venture, the judge noted.

Dawson wrote in his ruling that there was a likelihood of confusion among consumers as to the origin of t-shirts sold by both O’Neal’s company and Calmese's firm.

The "likelihood of confusion" concept is a key factor in trademark law.

"Mine O’ Mine sells T-shirts with the Shaq mark and Calmese sold t-shirts with the Shaqtus mark," Dawson’s ruling said.

"Calmese intended to cause confusion with the Shaqtus mark. He knew about the Shaq mark and yet chose the Shaqtus mark anyway after O’Neal was traded to the Phoenix Suns in February 2008 and after O’Neal was dubbed 'Shaqtus,'" the judge wrote. "There is no question Calmese intended Shaqtus to be confusingly similar to Shaq and the Shaq family of marks."

O’Neal’s company was represented in the lawsuit by attorneys with the Las Vegas offices of the law firms Lewis and Roca LLP and Gordon Silver.

Calmese represented himself.

Legal

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