NEW ORLEANS — Defend New Orleans founder Jac Currie launched his DNO design 20 years ago.
The design, which features the words ‘Defend New Orleans’ and a skull with spikes and a fleur-de-lis, can now be found on t-shirts, pins, and the front of the DNO flagship store in the Garden District.
But in a social media post and email to customers on Wednesday, DNO said they may have to bid farewell to the design.
“Since 2003, our classic has been an expression of individualism for our community and beyond. We just received a mysterious letter and may have to say good-bye to our first design,” the DNO email said.
The ‘mysterious letter’ was a cease-and-desist sent by the NFL’s legal counsel on July 17.
The letter included enclosures of the products the NFL told DNO to stop selling and remove from its website and social media pages. The products were DNO’s ‘classic’ design in black and gold.
Since DNO made the post, other local businesses have been speaking up on the matter. Including another store with New Orleans centric designs, Dirty Coast.
“The NFL is once again kind of wasting its time attacking small businesses that are just trying to, you know, create products around our culture promoting one of our local beloved teams,” Blake Haney, founder and owner of Dirty Coast, said, “We think it’s not only not fair, but I think they have a case against them.”
New Orleans attorney, Bill Buckley, specializes in intellectual property and is a registered patent attorney.
“It comes down to likelihood of confusion, how similar the use is,” Buckley said.
The letter claims the design may be confusing for consumers who think the products are official NFL merchandise.
Buckley said an accusation of trademark infringement should be taken seriously.
“I mean especially if the other person who wants you to shut down has deep pockets, just defending that litigation is expensive,” Buckley said.
One of the defenses that may be available to DNO is the length of time they’ve used the design, Buckley said.
“If the NFL has known for five years that you’ve been using this mark, that they’ve known and done nothing about it. You can’t sit on your hands for trademark litigation,” Buckley said.
After doing a quick search of a trademark database, Buckley found the New Orleans Saints have owned trademark rights to a specific fleur-de-lis design, as well as a helmet with the same specific fleur-de-lis, since the 1970s.
Meanwhile, DNO said its design has been trademarked since 2007, and this is the first time receiving a cease-and-desist.
DNO’s shared a statement on Thursday after posting on social media encouraging customers to post photos of themselves in the design with the hashtag #DNO20.
“After Hurricanes Katrina and Rita devastated our area, Defend New Orleans became not just a rallying cry, but a representation of the defiant culture of South Louisiana,” DNO said, “Without more evidence that the last 20 years of sales have somehow been unknown to the NFL and some unknown legal peril, we will not stop.”
DNO's attorney also responded to the NFL in a letter on Thursday.
“We will not advise them to stop,” the lawyer said in the letter.
The letter explained the historical significance of Defend New Orleans and the fleur-de-lis, which dates to New Orleans’ founding in 1718.
A path forward for DNO may be working with the NFL to obtain a licensing agreement, Buckley said.
However, that option may not be available to a small business with a limited budget.
“We just don’t like bullies and don’t like the idea that the NFL feels like they need to shut someone down for selling something to celebrate one of our teams,” Haney said.
While the cease-and-desist mentions the Saints, it was not sent by the New Orleans Saints organization.
The NFL has not responded to WWLTV’s request for comment at this time. The New Orleans Saints did not comment.