Last month, the National Football League (NFL) and the Tennessee Titans (Titans) filed an opposition proceeding against an XFL football team. Specifically, the NFL believes that the Houston Roughnecks (Roughnecks) logo and the Oiler’s mark are confusingly similar to one another.

Screenshot of Opposition Proceeding No. 91266768

What is an opposition proceeding?

A trademark opposition proceeding is an administrative proceeding before the Trademark Trial and Appeal Board (TTAB). In the present case, the NFL is attempting to prevent the Roughnecks from registering the logo above. Specifically, the NFL believes that consumers encountering the Roughnecks logo will falsely associate the NFL with the Roughnecks, thereby causing harm.

According to the complaint, before moving to Tennessee, the Titans were known as the Houston Oilers. The Oiler’s mark depicted above was used to represent the Texas football team at the time. To this day, the NFL has continued to sell officially licensed merchandise under the Oiler’s mark. Despite moving and changing its name, the NFL asserts that the NFL still retains the “valuable goodwill and consumer recognition” associated with the Oiler’s Mark.

The Confusingly Similar Standard

The test for determining a likelihood of confusion between two marks is “whether there is a likelihood of confusion as to the source or sponsorship of the goods or services because of the marks used thereon.” See, e.g., Paula Payne Prods. Co. v. Johnson’s Publ’g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (C.C.P.A. 1973) 

On this note, the NFL argues that there is a high degree of similarity between the Roughnecks trademark and the Oiler’s Mark. In this case, I would tend to agree with the NFL. In particular, both marks represent an oil derrick with two levels. Crossing bars extending outwardly beyond the supports of the oil derrick. Furthermore, each level includes a pair of support members in the form of an “X.” Additionally, both the Oiler’s mark and the Roughneck mark similarly use the colors red, white, and blue.

Takeaway

It appears from an initial look that the NFL has a strong case to prevent the Roughnecks trademark from registering. However, trademark law is extremely subjective. This notion is highlighted by the fact that the Examining Attorney did not believe the two trademarks to be confusingly similar, which is why an opposition proceeding was ultimately filed by the NFL.

Overall, a simple trademark search of the USPTO’s database would likely have found the Oiler’s mark. Upon encountering the mark, the XFL’s trademark attorney should have at very least informed the Roughnecks about the possibility that the NFL would oppose its mark even if the Examiner initially allowed the application. This notion is especially true given the NFL’s litigation friendly track record.

What is an trademark opposition proceeding?

A trademark opposition proceeding is an administrative proceeding with the Trademark Trial and Appeal Board. In an opposition proceeding, one party seeks to prevent the registration of another parties trademark.

When can you file a trademark opposition proceeding?

A trademark opposition proceeding or a request for extension of time to oppose must be filed within 30 after the date of publication of a trademark.

What is the XFL?

The XFL is an football league that is comprised of eight different teams and was founded in 1999.

What state are the Roughnecks from?

The Roughnecks are an American football teams located in Houston, Texas.