How the NFL Protects the Shield

The league keeps opposin’ opposin’ opposin’ opposin’

3 min readOct 5, 2017

For quite some time, the National Football League (NFL) has aggressively gone after individuals and businesses alike that infringe upon the league’s intellectual property rights, specifically trademarks and copyrightable material. And for good reason.

After all, the NFL has long embraced the motto of protecting the shield. In turn, the filings on the United States Patent and Trademark Office’s Trademark Trial and Appeal Board Inquiry System (TTABVUE) back up that proposition.

Put more succinctly, NFL Properties LLC opposed several third-party trademark applications over the past few months that sought to register one or more trademarks that are similar to those already registered by the NFL and its teams.

At the outset, NFL Properties LLC (“NFLP”) will be a party to every trademark proceeding because it “engages in licensing and marketing of the team-owned trademarks and logos,” per Bloomberg.com, meaning that it is an NFL subsidiary.

Thus, if there is a third-party application that seeks to register a trademark that is similar to a trademark already owned by one of the NFL teams (i.e. the Indianapolis Colts; more on this below), the Colts and NFLP will be listed as the Plaintiff. If NFLP is only identified as the Plaintiff, the mark being opposed is one that is not team-specific.

So, before I dive into some examples to see how all of this plays out in practice, what does it mean to oppose an application to register? Below is the usual trademark registration timeline up until opposing an application to register comes to fruition.

Individual or company submits application — filing basis is either based on Section 1(a), Use in Commerce, or Section 1(b), Intent to Use.
USPTO attorney reviews the application.
Attorney may send an Office Action letter to such individual or company that outlines changes that need to be made to the application. Individual or company has six months to respond; if not, application is considered abandoned.
Assuming that the USPTO attorney does not send an Office Action letter or that the party’s response to the Office Action letter satisfies the necessary requirements, the USPTO will publish the mark in the Official Gazette (OG).
The mark will remain in the OG for thirty days, as another party may oppose the mark with the Trademark Trial & Appeal Board (TTAB) if such party feels it would be harmed by registration.

Additionally, there are several bases, or grounds, for the NFL to oppose a registration, which are derived from the Lanham Act. The most common is priority and likelihood of confusion (15 U.S.C. § 1052(d)). Additional ones include, but are not limited to: dilution by blurring (15 U.S.C. § 1125(c)(2)(B))and false suggestion of a connection with “persons … institutions, beliefs, or national symbols” (15 U.S.C. § 1052(a)).

Within the Notice of Opposition, the opposers will cite specific design and/or word marks that serve as the bases for opposition. Finally, the NFLP may occasionally request a thirty-day extension to oppose the application to register, which is usually granted by the TTAB.

The Oakland Raiders & NFLP, Opposers, v. Robert Bender, Applicant

Opposition Filing Date: Aug. 16, 2017

Grounds for Opposition: (1) Priority and likelihood of confusion; (2) Dilution by blurring; (3) False suggestion of a connection.

Applicant’s Mark: “CASINO RAIDERS”

Goods/Services Affected by Opposition: Class 25 (Clothing)

Notice of Opposition Complaint

Indianapolis Colts & NFLP, Opposers, v. Louis Zogaib, Applicant

Opposition Filing Date: Sept. 6, 2017

Grounds for Opposition: Priority and likelihood of confusion

Applicant’s Mark: “BELIEVE IN BLUE”

Goods/Services Affected by Opposition: Class 25 (Clothing)

Notice of Opposition Complaint