29/01/2021
With the US presidential elections over many will be turning their attention to a no less captivating, but more traditional sport – Football. With the NFL Super Bowl just over a week away, many will be swapping Gaga for The Weeknd as the Tampa Bay Buccaneers take on the Kansas City Chiefs.
The US National football League “NFL” was founded in 1920 and is made up of 32 Teams. Over the years teams have sprung up all over the USA, their names referencing not only their geographical roots but also a historical connection to the predominant industry in the towns and cities they represent. Current team names give us a clear geographical insight into industries such as freight packing, horse breeding and oil.
In 2001 an experimental alternative to the NFL was launched by Vince McMahon: the XFL. The XFL hosted fewer teams, promising quicker games and greater entertainment. The XFL lasted just one season before collapsing due to significant financial losses. In 2018, McMahon revived the league with a planned restart date in 2020. Fast forward to January 2021 and the picture for the XFL remains bleak, it having lasted only 5 weeks before collapsing due to financial pressures linked to COVID 19. Dwayne Johnson and his associates now own the league and another restart is scheduled for the 2022 season.
As part of the 2020 restart, 8 new teams were created, each with completely new names and logos. To accompany the re-branding, Alpha Entertainment LLC (owned by XFL creator Vince McMahon) filed a number of trade mark applications at the US Patent and Trademark Office (USPTO) to register the primary and secondary logos of the new teams. One of the new teams is the Houston Roughnecks. Their primary and secondary logos are shown below in the colours in which registration is being sought.
Although the USPTO did not consider the primary and secondary logo marks to be confusingly similar with any earlier US trade marks, NFL Properties (the licensing and merchandising arm of the NFL) disagreed. On 28 December 2020 NFL Properties (NFLP) opposed the application to register the Roughnecks’ primary logo on behalf of the Tennessee Titans (of current standing) & Houston Oilers (of old). On 19 January 2021 the NFLP, filed an opposition against the Roughnecks’ secondary logo on behalf of the New England Patriots.
Head To Head: The Oppositions
Both the trade mark oppositions filed by the NFLP were based on Section 2(d) of the Lanham Act, which prevents the registration of trade marks where there exists a likelihood of confusion with an earlier registered trade mark as to the origin of the goods/services.
The primary logo has been opposed on the ground that it is too similar to the old Houston Oilers logo (who became the “Tennessee Titans” in 1999), meaning consumers would be confused as to the origin of the goods and services. The secondary logo has been opposed on the ground that, on account of its similarity with the New England Patriots logo, it would cause confusion as to the origin of the goods and services.
Houston Oilers – Gone but not forgotten
For those familiar with the history of the NFL, you’ll be aware of the Titans/Oilers link. Houston Oilers were founded in 1960, reflecting the significant number of oil fields and the importance of this industry in the region. When the team relocated to Tennessee in 1997 the name had to change. After flirting with the name ‘Tennessee Oilers’ for a couple of years, at the turn of the century they became the Tennessee Titans we know today. Despite rebranding to the Tennessee Titans, as the NFLP explained in their opposition, the heritage of oil has not been forgotten as they continue to sell merchandise bearing the old oilers logo and have worn ‘throwback’ helmets on a number of occasions bearing the oilers logo.
Confusingly Similar?
Both logos filed by Alpha Entertainment LLC cover the core goods and services for football teams; Class 25 for clothing and sportswear, as well as Class 41 for entertainment services relating to football games. A pre-requisite for finding that a likelihood of consumer confusion exists is that the conflicting trade marks cover identical or similar goods and/or services. As Alpha Entertainment LLC have applied to register their trade marks for the same goods and services for which the NFL’s logos are registered and used, (merchandise and entertainment services relating to football) this threshold is met.
In their opposition on behalf of the Titans/Oilers the NFLP claimed as follows:
“[the] Applicant’s Mark also contains a depiction of an oil derrick with two levels and crossing bars throughout, and utilizes the colors red, white and blue.” The NFLP claim the application “was intended to trade off on the goodwill that Opposers have built in the Oilers Mark.”
Houston Roughnecks Primary Logo, as used:
Regarding the similarity between the secondary logo with the Patriots logo, the NFLP claimed as follows:
“both marks feature a heavily outlined, male figure in profile facing to the right with a downturned frown, a pointed chin, shadowed eyes (without pupils), a decorative swoosh design to the left featuring stripes, and the same blue, red and white colors.”They go on to say “[the] Applicant is making a clear attempt to draw on the goodwill and recognition that Opposers have built up over decades of use.”
Houston Roughnecks Secondary Logo, as used:
The question for the USPTO to answer with regard to the similarity of the marks is whether the differences between the logos in the registered trade marks and those in Alpha Entertainment LLC’s applications are significant enough to change the overall impression of the mark in the minds of consumer to the extent that no confusion would occur.
Offence or Defence: What’s Next?
With the XFL sides not due to take to the field again until 2022 and now under new ownership, is yet another setback on the horizon for the ill-fated XFL or is this simply a side show to the main event? We’ll have to wait and see. The ball is firmly in the XFL’s half as Alpha Entertainment have until the 6th and 28th of February respectively to respond to the oppositions filed against the Roughnecks primary and secondary logo.
Under EU/UK trade mark law these oppositions prove difficult to win based on modest visual or conceptual similarities and in the absence of the earlier marks possessing a reputation, particularly when the primary and secondary logos are often used alongside other distinguishing elements such as the team name “Houston Roughnecks”.
What is all but assured is that the Tennessee Titans will be keen to avoid any more defeats, even off-field, as they continue to recover from their recent Wild Card round defeat to the Baltimore Ravens in the NFL play offs.
The same could be said for the Patriots who will be desperate to get back to winning ways after they missed out on the play offs for the first time since 2008.
Watch this space as we wait to see whether the XFL respond with a play of their own.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
