Who Will Prevail in the Buffalo Bills' Effort to Trademark

Who Will Prevail in the Buffalo Bills' Effort to Trademark "Bills Mafia?"

October 19, 2020

The Buffalo Bills LLC's recent applications to register the trademark "BILLS MAFIA" at the United States Patent and Trademark Office (USPTO) in standard characters and stylized form in a clothing classification may encounter several hurdles.
First, there is already a pending application at the USPTO made by an individual named Karina Lopez to register the mark "BILLSMAFIA" in standard characters for a service described as "creating an on-line community of registered users to talk about Buffalo New York sports" (SN90051257) The Lopez application was made on July 14, 2020 and has not yet been reviewed by a USPTO examiner; a process that may take another month.
This prior application, if still pending in 3-4 months when the Bills applications are reviewed, may be cited by the USPTO examiner as a potential cause of consumer confusion in the marketplace as to the source of the Bills goods.
To be sure, the Bills own prior federal registrations of the "Bills" trademark, and not only for entertainment services, namely presenting athletic contests, but in various merchandise categories as well, including clothing categories. Those prior registrations could prove to be a problem for the Lopez application when it is examined, or if the Bills take umbrage and oppose the Lopez application which the Bills certainly have the means to do. 
The word "MAFIA" is also not all that unique from a trademark standpoint as there are over 800 trademark registrations or applications predating the Bills applications containing the word Mafia that have been filed at the USPTO. It is therefore likely that anyone seeking to register "BILLS MAFIA" may have to disclaim the right to use the word Mafia on an exclusive basis.
The bigger potential problem I see for the Bills is that both of their applications certified, as they must, that to the best of the Bills knowledge no other persons have the right to use the mark "BILLS MAFIA" in commerce in a manner likely, when used on or in connection with the goods or services of such other persons, to cause confusion, or mistake or to deceive as to the source.
The Bills having allowed the use by others of "BILLS MAFIA" on so many items, in so many ways, and for so many years may have to take a closer look at that certification.  At the very least the Bills may have lost the right, particularly with regard to those prior users of "BILLS MAFIA" about which they had knowledge, to require them to stop even if the Bills are ultimately successful in securing the registrations.
Finally, the Bills applications are based upon the Bills "bona fide intention" to use the marks on numerous clothing items they intend to sell down the road.  As a consequence, the Bills did not have to file specimens with the applications showing how the marks are actually used on any clothing items.  

Using the words or logo merely as decoration or ornamentation on clothing, however, does not necessarily mean that the words or logo are functioning as a designator of source which is what trademarks are all about.  In other words, if you put "BILLS MAFIA" on a Fruit of the Loom T-Shirt it is still a Fruit of the Loom T-shirt!"
One thing is for certain, the initial move by the Bills to secure the trademark for BILLS MAFIA has drawn a lot of attention from the most passionate fanbase in the NFL. All eyes will be watching closely as this matter unfolds in the coming months.
Les Greenbaum is an experienced attorney who focuses his practice in the areas of trademark, copyright, entertainment, art and sports law, unfair competition and related litigation. He can be reached at Gross Shuman P.C. by calling 716-854-4300 ext. 230 or lgreenbaum@gross-shuman.com.