The Dallas Cowboys are taking one of their fights off the field this season. The NFL team has filed a notice of opposition with the Trademark Trial and Appeal Board (TTAB) against the Palmer-Williams Group, a youth development nonprofit formed by former team running back Sherman Williams and former Minnesota Vikings running back David Palmer, over its application to register a mark allegedly similar to several registered trademarks that the team has. Last September, the Palmer-Williams Group filed an intent-to-use trademark application for PRICHARD COWBOYS, a youth football association, for use on sports apparel. The image features a five-point star with a border in place of the first O in COWBOYS. The proposed trademark was published for opposition in the Official Gazette this past March.
In the filing, the Dallas Cowboys state three grounds for opposition: (1) likelihood of confusion, (2) dilution by blurring, and (3) false suggestion of a connection with persons, living or dead, institutions, beliefs or national symbols, or brings them into contempt or disrepute. The notice points to the Dallas Cowboys’ many registered trademarks as the basis for opposition, including various marks with the word COWBOYS and a five-point star image with a border.
“For many years, and long before the September 9, 2015, filing date of Applicant’s intent-to-use application, Opposers have used marks consisting of and containing COWBOYS and marks consisting of and containing the Cowboys Star Design, depicted below, in connection with their business of organizing, conducting, and promoting the Cowboys football franchise,” reads the notice. “During the longstanding, widespread and continuous use of Opposers’ COWBOYS and Star Design Marks, Opposers and their authorized business partners, sponsors, and licensees have expended considerable time, effort, and money in advertising and publicizing the sale of goods and services bearing the Opposers’ COWBOYS and Star Design Marks. As a result of Opposers’ regular, extensive and well-publicized use, Opposers’ COWBOYS and Star Design Marks are famous in the United States and are associated exclusively with Opposers and their high quality goods and services.”
The team claims that it will be damaged if Palmer-Williams’ trademark is registered. Under the Lanham Act, all three grounds mentioned in the Dallas Cowboys’ notice are reasons that trademarks can be refused for registration. The Palmer-Williams Group’s answer is due in mid-October.
If you have a question about the trademark filing process, please contact The Fried Firm.