Tuesday, 22 June 2021 13:44

NFL News: “WASHINGTON FOOTBALL TEAM” Trademark Applications Initially Refused by the USPTO

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As part of the re-naming effort of the National Football League (“NFL”) team formerly known as the Washington Redskins, Pro Football, Inc. (“Applicant”) filed applications with the United States Patent and Trademark Office during July 2020 for the marks “WASHINGTON FOOTBALL TEAM” and “WASHINGTON FOOTBALL TEAM” & Design, Footballwashington , for use in connection with: clothing in International Class 25; and entertainment in the nature of professional football exhibitions and games in International Class 41. The applications were subsequently reviewed by an Examining Attorney, and a pair of Office Actions were issued on June 18, 2021.[1]

The Examining Attorney issued a likelihood of confusion refusal for both applications as to International Class 25 only, citing U.S. Trademark Registration No. 4,733,519 for “WASHINGTON FOOTBALL CLUB” (also for clothing in the same International Class). The Examiner took the position that the marks are confusingly similar because they are “virtually identical in sound, appearance and meaning” and “create the same commercial impression in the minds of consumers.” He also noted that “CLUB is another name for an athletic team” before listing the similarities between the goods offered under each mark.

However, the Examiner did not stop there. He next took the position that the marks are primarily geographically descriptive because “WASHINGTON is a generally known geographic location,” Applicant “is located 32 miles outside of Washington, D.C.,” and Applicant is “the professional football team for the Washington, D.C. metropolitan area.”

Finally, as to the “WASHINGTON FOOTBALL TEAM” & Design application filed on July 29, 2020, the Examiner cited two prior filed applications to warn that, if one or both of those marks register, Applicant’s may be refused for a likelihood of confusion. Those two prior filed applications are U.S. Trademark Application Serial No. 90/072,158 for “WASHINGTON TEAM FOOTBALLERS” and Serial No. 90/072,194 for “WTF WASHINGTON TEAM FOOTBALLERS”, both for use in connection with clothing in International Class 25 and filed on July 24, 2020 by applicant Marketwell Nutrition Corporation. The application for “WASHINGTON FOOTBALL TEAM” did not receive this warning, as it was filed on July 23, 2020.

Pro Football has six months to respond to the Examiner’s Office Action.

[1] See U.S. Trademark Application Serial No. 90/069,568, USPTO TSDR ( https://tsdr.uspto.gov/#caseNumber=90069568&caseSearchType=US_APPLICATION&caseType=SERIAL_NO&searchType=documentSearch) (last accessed June 21, 2021 at 4:32 PM) (for “WASHINGTON FOOTBALL TEAM”).; see also U.S. Trademark Application Serial No. 90/080,449, USPTO TSDR ( https://tsdr.uspto.gov/#caseNumber=90080449&caseSearchType=US_APPLICATION&caseType=SERIAL_NO&searchType=documentSearch) (last accessed June 21, 2021 at 4:32 PM) (for “WASHINGTON FOOTBALL TEAM” & Design).

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Kelly Malloy

Ms. Malloy earned her bachelor’s degree in Industrial and Systems Engineering at the University of Florida, and is currently a J.D. Candidate at the University of Miami School of Law concentrating on intellectual property. At Miami Law, Ms. Malloy serves as President of the Student Bar Association and is on the University of Miami Law Review. Ms. Malloy also served as President of the Intellectual Property Law Society, President of the Inter-Club Council, Executive Board Secretary of the Student Bar Association, and 1L Senator during her time at Miami Law. As a result of her dedication to her coursework, Ms. Malloy is in the top 10% of her class, received the Dean’s Merit Scholarship, and was awarded the Dean’s Certificate of Achievement in her Patent Law course. Ms. Malloy is a law clerk at the firm and assists attorneys by drafting patent applications, performing legal research, and preparing for litigation.