Pro-Football, Inc. and NFL Properties LLCv.Campbell

Trademark Trial and Appeal Board

Mar 31, 2004

No. 91152156 (T.T.A.B. Mar. 31, 2004)

Mailed: March 31, 2004
Paper No. 20
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Pro-Football, Inc. and NFL Properties LLC
v.
David S. Campbell
_______
Opposition No. 91152156
to Application No. 76021469
filed on April 10, 2000
_______
Robert Lloyd Raskopf, Jennifer Johnson Millones and Sean D.
Burke of White & Case for Pro-Football, Inc. and NFL
Properties LLC.
David S. Campbell, Esq., Pro se.
_______
Before Walters, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Pro-Football, Inc. and NFL Properties LLC (“opposers”)
filed their opposition to the application of David S.
Campbell to register the mark WASHINGTON PIGSKINS for the
goods identified below:
“Trading cards, posters, magazines, and books
regarding football; postcards, calendars, wrapping
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Opposition No. 91152156
2
paper, paper gift boxes, paper stickers, paper
napkins, paper towels, poster books, note pads,
paper hats, and greeting cards,” in International
Class 16; and
“Men’s women’s and children’s clothing and
footwear, namely coaches caps, wool hats, painters
caps, baseball caps, visors, headbands, ear muffs,
knit face masks, belts, wrist bands, t-shirts,
tank tops, pajamas, golf shirts, sweaters,
sweatshirts, jackets, neckties, braces, cloth
bibs, jerseys, night shirts, coats, robes,
raincoats, parkas, ponchos, sneakers, gloves,
scarves, snow suits, mittens, aprons, down
jackets, leather jackets, shorts, sweat pants,
jeans, pants, knickers, socks, underwear, bathing
suits, and leg warmers,” in International Class
25.1
As grounds for opposition, opposers assert that
applicant’s mark, when applied to applicant’s goods so
resembles opposer Pro-Football, Inc.’s previously used and
registered marks incorporating the terms WASHINGTON
REDSKINS, REDSKINS and SKINS for organizing, conducting and
promoting the Washington Redskins football franchise and for
a wide variety of goods and services including paper goods,
printed matter and clothing, as to be likely to cause
confusion, under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d). The registered marks pleaded by opposers
are set forth below:

1 Application Serial No. 76021469, filed April 10, 2000, based upon an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods.
Opposition No. 91152156
3
REDSKINS
for “entertainment services – namely, presentations of
professional football contests,” in International Class 41;2

for “entertainment services – namely, football exhibitions
rendered live in stadia and through the media of radio and
television broadcasts,” in International Class 41;3
for “entertainment services – namely, presentations of
professional football contests,” in International Class 41;4

2 Registration No. 1,085,092, issued February 7, 1978, to Pro-Football,
Inc. [Sections 8 and 15 affidavits accepted and acknowledged,
respectively. Renewed for a term of 10 years from February 7, 1998.]
3 Registration No. 836,122, issued September 26, 1967, to Pro-Football,
Inc. [Sections 8 and 15 affidavits accepted and acknowledged,
respectively. Renewed for a term of 20 years from September 26, 1987.]
4 Registration No. 987,127, issued June 25, 1974, to Pro-Football, Inc.
[Sections 8 and 15 affidavits accepted and acknowledged, respectively.
Renewed for a term of 10 years from June 25, 1994.]
Opposition No. 91152156
4
WASHINGTON REDSKINS
For “entertainment services – namely, presentations of
professional football contests,” in International Class 41;5

for “entertainment services – namely, presentations of
professional football contests,” in International Class 41.6
Additionally, opposers assert as a ground for
opposition, under Section 2(a) of the Trademark Act, 15
U.S.C. §1052(a), that applicant intends to trade on the
goodwill associated with opposers, and that applicant’s
intended use of his mark will falsely suggest a connection
with opposer.
Opposers also assert a ground for opposition under
Sections 2(f) and 13(a) of the Trademark Act, 15 U.S.C.
§§1052(f) and 1063, alleging that the registration of
applicant’s proposed mark “will dilute the distinctive and

5 Registration No. 978,824, issued February 12, 1974, to Pro-Football,
Inc. [Sections 8 and 15 affidavits accepted and acknowledged,
respectively. Renewed for a term of 10 years from February 12, 2004.]
6 Registration No. 986,668, issued June 18, 1974, to Pro-Football, Inc.
[Section 8 affidavit accepted. Renewed for a term of 10 years from June
18, 1994.]
Opposition No. 91152156
5
famous quality of the SKINS marks.”7 [Notice of Opposition,
para. 21.]
Applicant, in his answer, stated he was without
sufficient information to admit or deny or he denied the
salient allegations of the claim and asserted as affirmative
defenses the equitable grounds of waiver, laches, estoppel
and unclean hands.8 Additionally, applicant asserted that
he “does not purport to own or run a football team” (para.
6); that opposer’s marks are disparaging; and that his mark
“does not purport to characterize an ethnic group” (para.
5).9
The Record
The record consists of the pleadings; the file of the
involved application; certified status and title copies of
opposer Pro-Football Inc.’s five pleaded federal

7 It appears that opposers intended to plead a claim of dilution under
Section 43(c) of the Trademark Act, 15 U.S.C. §1125(c), and we have so
considered it. Additionally, we have considered paragraph nos. 9 and 10
together and find that opposers’ allegation of dilution is legally
sufficient, inasmuch as the two paragraphs together contain the required
allegation that opposer Pro-Football Inc.’s marks became famous prior to
the filing date of the involved application. See Polaris Industries Inc.
v. DC Comics, 59 USPQ2d 1798 (TTAB 2000). See also, Toro Co. v. ToroHead
Inc., 61 USPQ2d 1164 (TTAB 2001). Therefore, we have considered this to
be a properly pleaded claim of dilution.
8 These defenses have not been tried by the parties and, therefore, we
have considered them waived. Additionally, we note opposer’s
Interrogatory No. 13, asking applicant’s basis for these defenses, and
applicant’s response that “Applicant will agree to dismiss these
equitable defenses.”
9 Applicant’s statements constitute, in the absence of a counterclaim to
cancel opposer’s pleaded registrations, an impermissible attack on the
validity of such registrations. We add that, while applicant has stated
his belief that opposer Pro-Football’s registrations have been
cancelled, applicant’s statement is inaccurate.
Opposition No. 91152156
6
registrations10 and photocopies of various state
registrations, made of record by opposers’ notice of
reliance; various printed publications and a copy of a prior
decision of this Board, all made of record by applicant’s
notice of reliance11; and the testimony depositions, with
accompanying exhibits, by opposers of David M. Proper,
counsel in the legal department of the National Football
League, and Susan Rothman, senior director of licensing for
the National Football League. Only opposers filed a brief
on the case and a hearing was not requested.
Factual Findings
The record establishes the following facts in this
case.
Opposer NFL Properties, LLC (“NFL Properties”) is the
exclusive licensee of the National Football League (“NFL”);
and its purpose is to promote and exploit the trademarks and
intellectual property of the NFL and its member clubs. NFL
Properties has been entering into sponsorship and licensing
agreements for NFL trademarks since 1963.

10 Opposer also included a certified copy of its Registration No.
1,606,810, which was not pleaded and, therefore, has not been
considered.
11 Opposers filed, but withdrew, a motion to strike applicant’s notice
of reliance as untimely filed. However, opposers’ stated in their brief
that the Board should grant their motion to strike as conceded because
applicant did not respond thereto. It was reasonable for applicant not
to respond in view of opposers withdrawal of the motion. We consider
opposers to have waived their objection and, thus, the documents
submitted by applicant’s notice of reliance are part of the record.
Opposition No. 91152156
7
Opposer Pro-Football, Inc. (“Pro-Football”) has
operated the Washington Redskins professional football team
since 1937; and it is the owner of the pleaded and
established registrations for marks including the terms
REDSKINS and WASHINGTON REDSKINS for entertainment services
pertaining to professional football games.
The NFL provides coverage and broadcasts of the
Redskins football games nationwide via its broadcast
partners, CBS, ABC, ESPN and Fox; and the REDSKINS and
WASHINGTON REDSKINS marks are used in connection therewith.
In 1999, Redskins football games televised in the Washington
area had a 29.9 average rating (percentage of total TVs,
whether on or off, viewing Redskins games) and 55 average
share (percentage of TVs on and viewing Redskins games). In
2000, the average rating was 24.8 and the average share was
48.
The WASHINGTON REDSKINS and REDSKINS marks have been
used widely in many print media articles about the football
team. Additionally, many print media articles from
approximately 1983 to the time of trial refer to the
Redskins football team and/or players on the team as HOGS.
NFL licensed goods include, among many items,
stationery and school supplies, calendars, posters, mugs,
bar supplies, key chains, aprons, hats, trading cards, paper
products and party goods, and many types of clothing for
Opposition No. 91152156
8
men, women and children. The majority of the NFL licensed
items range in wholesale price between approximately $5 and
$15 for non-clothing items and between approximately $15 and
$35 for clothing items. Sales revenue generated by sales of
NFL licensed products is approximately $2 billion retail
annually, of which one percent is attributable to products
bearing the WASHINGTON REDSKINS and REDSKINS trademarks.
NFL licensed items are sold to consumers through mass
merchandisers, including K-Mart, Wal-Mart and Target;
national retailers, including Sears and JC Penney;
department stores, including Federated Stores and May
Company; and sporting goods stores, including Footlocker,
Champs and Sports Authority. NFL licensed items are also
sold via the Internet and TV shopping channels HSN and QVC.
Applicant responded to a letter from opposer NFL
Properties’ counsel, David Proper, and wrote a letter to Mr.
Proper dated February 25, 2002 that stated, in part, the
following:
… I am now, and have been for 30 years, a fan of
the Washington Redskins football team.
…
In 1993, I set out on a project to apply some
creativity to solve the Washington NFL team name
problem.
…
I became committed to the discovery and
development of a new team name and logo for the
Washington DC NFL football franchise. I undertook
this work as a friend and fan of the team. After
several weeks of research and writing, I came upon
the name which I believed was a worthy successor
name: the WASHINGTON PIGSKINS.™
Opposition No. 91152156
9
…
The reasons I believe that WASHINGTON PIGSKINS™ is
the appropriate new successor name for the
Washington DC Redskins are as follows:
1. WASHINGTON PIGSKINS™ does not stray very far from
the current team name. It has the same number of
syllables and the same number of letters. It
rhymes with “Washington Redskins.”
2. WASHINGTON PIGSKINS™ incorporates the nickname for
a football: a pigskin.
…
3. Many Washington fans have already shortened the
“Redskins” to the “Skins.” Naming the team
PIGSKINS means that fans can still abbreviate the
team name to the ‘Skins.
4. Washington’s NFL team already has a history of
porcine affinity … the offensive front line has
been know as the “hogs” for decades.
…
For the foregoing reasons, I don’t believe that
NFL Properties is compelled to oppose the
registration of this mark, and should rather work
together with me to assure that the Redskins have
the WASHINGTON PIGSKINS™ name in reserve if things
turn out badly in the legal process.
Analysis
Likelihood of Confusion
Inasmuch as certified copies of opposer Pro-Football
Inc.’s registrations are of record, there is no issue with
respect to opposers’ priority. King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Additionally, opposers have established use of
the marks WASHINGTON REDSKINS and REDSKINS in connection
with many, if not all, of the goods identified in the
opposed application since long before the filing date of the
application.
Opposition No. 91152156
10
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also, In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
The first du Pont factor we consider is fame and we
conclude that opposers have established that their
WASHINGTON REDSKINS and REDSKINS marks are strong, famous
marks in connection with their entertainment services, and
that this fame extends to their wide range of licensed
products bearing the marks. This factor weighs strongly in
opposers’ favor. See, Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894 (Fed. Cir. 2000).
As our primary reviewing Court has made clear, fame of
the prior mark plays a dominant role in cases featuring a
famous or strong mark. “Famous or strong marks enjoy a wide
latitude of legal protection” and a famous mark “casts a
long shadow which competitors must avoid.” Kenner Parker
Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22
USPQ2d 1453, 1456 (Fed. Cir. 1992). In this regard, the
Court has noted that there is “no excuse for even
approaching the well-known trademark of a competitor … and
that all doubt as to whether confusion, mistake, or
Opposition No. 91152156
11
deception is likely is to be resolved against the newcomer,
especially when the established mark is one which is
famous.” Kenner Parker Toys, id. at 1456. See also, Nina
Ricci S.A.R.L. v. E.T.F. Enterprises, Inc., 889 F.2d 1070, 2
USPQ2d 1901, 1904 (Fed. Cir. 1989). This is so because “a
well-known mark enjoys an appropriately wider latitude of
legal protection, for similar marks tend to be more readily
confused with a mark that is already known to the public.”
Opryland USA, Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471, 1474 (Fed. Cir. 1992). See also,
Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984)(involving the
marks SPICE ISLANDS and SPICE VALLEY).
With respect to the goods and services of the parties,
we observe that there is a substantial overlap in the goods
identified in the application and the licensed goods that
use the WASHINGTON REDSKINS and REDSKINS marks. Further,
many of applicant’s identified goods, e.g., “trading cards,”
“posters,” “books regarding football,” “coaches caps,”
“jerseys” and “sweat pants,” are exactly the types of
licensed products that are likely to be associated with
opposers’ entertainment services in the nature of
professional football games. Thus, we conclude that the
goods of the parties are either identical or closely related
and applicant’s goods are related to opposer’s services.
Opposition No. 91152156
12
Because the parties’ goods are identical or closely related,
such goods will travel through the same trade channels to
the same classes of purchasers. The American public are the
likely purchasers of the parties’ goods and of opposers’
services.
Moreover, opposer’s evidence establishes that the goods
identified in the application and those upon which opposers’
marks are used are relatively inexpensive and are likely to
be purchased by the general consumer with less purchasing
care than would be exercised for a more expensive product.
Turning to the marks, we note that while we must base
our determination on a comparison of the marks in their
entireties, we are guided, equally, by the well established
principle that, in articulating reasons for reaching a
conclusion on the issue of confusion, “there is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of
the marks in their entireties.” In re National Data Corp.,
732 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
For all of the reasons noted by applicant and quoted
above, we find that applicant’s proposed mark, WASHINGTON
PIGSKINS is substantially similar to opposers’ word marks
and design marks incorporating WASHINGTON REDSKINS or
REDSKINS in appearance, sound, connotation and overall
Opposition No. 91152156
13
commercial impression. Applicant essentially conceded this
in the referenced letter. The terms WASHINGTON REDSKINS and
WASHINGTON PIGSKINS have the identical first word and
identical last syllable, they have the same number of
syllables, the same number of letters and the marks rhyme.
As applicant stated, “pigskin” is an informal term for a
football,12 and thus, it is likely to bring to mind
opposers’ marks and services; and “hogs” has been used in
connection with players on opposers’ Redskins football team,
so that applicant’s mark incorporating the synonymous term
“pig” is likely to bring to mind opposers’ marks and
services. We conclude that applicant’s mark is
substantially similar to each of opposers’ pleaded and
established marks including the terms WASHINGTON REDSKINS or
REDSKINS and that this similarity is all the more
significant in view of the fame of opposers’ marks.
Finally, we find that the evidence clearly establishes
applicant’s bad faith adoption of the proposed mark. His
above-referenced letter establishes that his sole purpose in
adopting WASHINGTON PIGSKINS is to trade off the fame and
reputation of opposers’ marks. The fact that he states that
he is a fan with the interests of the football team at heart

12 We take judicial notice of the definition of “pigskin” as “3.
Informal a. Football” in The American Heritage Dictionary, 2nd College
Edition, 1992.
Opposition No. 91152156
14
in adopting this proposed mark is not relevant to our
analysis of the trademark issues herein.
Therefore, the relevant factors overwhelmingly lead us
to the conclusion that in view of the fame of opposers’
marks, the substantial similarity in the commercial
impressions of the parties’ marks, and applicant’s intent in
adopting his proposed mark, the contemporaneous use of the
parties’ marks on the goods and services involved in this
case is likely to cause confusion as to the source or
sponsorship of such goods and services.
Opposer’s Additional Claims
Because we have found that opposers have priority and
that a likelihood of confusion exists, we need not, and do
not, reach opposers’ claims of a false suggestion of a
connection with opposers, under Section 2(a) of the
Trademark Act, and dilution, under Section 43(a) of the
Trademark Act.
Decision: The opposition is sustained.