In this weekend’s Super Bowl LIV, the San Francisco 49ers face the Kansas City Chiefs. Meanwhile, off the field, the Dallas Cowboys are prepared to take on the 49ers in a court of law. In the 49ers’ long march to the Super Bowl, linebacker Kwon Alexander filed two trademark applications for “HOT BOYZZ” and “HOT BOYZZ UNIVERSITY.” Cowboys’ defenders and, namely, DeMarcus Lawrence claim they have been using the moniker since 2018 and that the 49ers copied it one year later.
In October 2018, Tankland Ventures, LLC, an entity owned by DeMarcus Lawrence, filed a trademark application for “HOT BOYZ” in International Class 025 for athletic shirts, athletic shorts, hats, hooded pullovers, and other types of clothing. The application is an intent to use, or § 1(b), application, which means the trademark is not currently being used in commerce. Interestingly, the term “BOYS” has been disclaimed from the mark, meaning that this portion of the mark has been deemed unregistrable in that the word merely describes a category of clothing intended for male children. Because the application did not limit the goods to a specific category of user, children’s clothing for males is therefore included within its scope. While Lawrence’s application for “HOT BOYS” has been approved for publication by an examining attorney and has indeed completed its publication period, no statement of use has been filed yet. Once Lawrence files a statement of use alleging that the mark is currently being used in commerce, the USPTO will likely proceed to register the mark.
On the other hand, Kwon Alexander filed applications for “HOT BOYZZ” and “HOT BOYZZ UNIVERSITY” mere months after Lawrence’s filing. However, Alexander claims a date of first use of January 1, 2016, while Lawrence has not filed any allegation of use for its mark. Identical to Lawrence’s “HOT BOYS” application, Alexander seeks registration for its marks in International Class 025 for athletic shirts, athletic shorts, hats, hooded pullovers, etc. Earlier this season, Alexander created shirts with “HOT BOYZZ” for his teammates and shouted out “HOT BOYZZ UNIVERSITY” during player introductions. While Alexander filed his applications last week, it will likely be months before the USPTO takes any official action related thereto.
To challenge Alexander’s mark, if the United States Patent and Trademark Office (USPTO) approves the same for publication, DeMarcus Lawrence may initiate an opposition proceeding before the Trademark Trial and Appeal Board (TTAB). Once the USPTO determines that a party’s mark is registrable, a thirty-day opposition period is initiated during which third parties may oppose the mark’s registration. The third party filing the opposition must allege a belief that he or she would be damaged by the registration of the mark. Here, Lawrence could oppose Alexander’s mark on the ground that there exists a likelihood of confusion due to the existence of his prior application for “HOT BOYZ.”
Because Alexander’s mark has not been published for opposition yet, Lawrence may file a letter of protest, which is an informal procedure that allows third parties to bring to the attention of the USPTO evidence bearing on the registrability of a mark. The most common ground for a letter of protest is a likelihood of confusion with a United States trademark registration or prior pending application, such as Lawrence’s HOT BOYZ application. While letters of protest may be submitted after the mark has been published, it is only accepted if the evidence supports a clear error on the part of the USPTO in approving the mark for publication. After the thirty-day publication period, a letter of protest will be denied as untimely.
After the publication period has expired and a trademark registers, a third party who objects to registration of the mark may initiate a cancellation proceeding. A third party, such as Lawrence, may attempt to cancel a trademark registration that it believes may be damaging to its own trademark rights. Similar to oppositions and letters of protest, grounds for cancelation may include priority and likelihood of confusion based thereon. Trademark cancellations may be filed at any time within five years of the trademark registration date, or at any time if the trademark become abandoned, fraud is alleged in the mark’s procurement, or the mark becomes merely descriptive or generic of the goods or services for which it is registered.
While no official legal action has been taken yet, Lawrence tweeted that his “legal team has been monitoring the situation, and has already taken the steps to protect our [trademark].” Other Cowboys players, including Jaylon Smith, have spoken out to support Lawrence in this dispute. However, it remains to be seen whether Lawrence, or his counsel, will proceed with action against Alexander before the USPTO or a federal court.