“Never drop your gun to hug a grizzly” is an Old West proverb. It seems like Sherman Williams, the running back for the Dallas Cowboys in the late 1990s, and David Palmer, the running back for the Minnesota Vikings in the late 1990s, could have used this advice before they started their trademark tango with the Dallas Cowboys. This is also a good example of where some basic trademark advice ahead of time probably could have avoided a big problem.
It all started with an innocent dream to provide leadership and mentorship to youths in the city of Prichard, Alabama. Due to Williams’ tenure with the Dallas Cowboys, Williams and Palmer started a company (the Palmer Williams Group) and created the Prichard Cowboys Youth Football Association, but the company didn’t just want to use the name “Cowboys” – they used these logos:
The company then filed a U.S. trademark application for the logo (Serial No. 86/751,535), to be used in association with articles of clothing. They also use the above blue, grey, and white logo on their Facebook page. But the Dallas Cowboys filed an Opposition proceeding against the trademark application. The Opposition will preclude the application from maturing into a registration if successful. The Opposition is based on the Dallas Cowboys’ prior registration for the logo below (as well as several other registrations) and the use of the word “cowboys” as used in association with clothing.
You will note, of course, that the logos are NOT identical. However, the Opposition has some legal merit. The general test for trademark infringement is “likelihood of confusion” rather than identicalness. Courts consider a variety of factors in assessing whether a new mark is likely to confuse consumers with a prior mark. Factors include the similarity of the marks, the similarity of the goods, the similarity of how the goods are sold, etc.
In this case, the marks are somewhat similar. Both logos are filled-in stars encompassed by another star, although the Prichard Cowboys logo has text in it. Both logos are used in association with nearly-identical goods – articles of clothing. Both logos are presumably sold in the same channels of trade, i.e. online or in stores.
We think the Palmer Williams Group could have avoided the “grizzly” in this case if they had used the name “Prichard Cowboys” alone, without the logo. What gives the claim some merit is the use of the nearly-identical (or identical) star logo. For example, take a look at the following six valid trademark registrations (not applications) that include the word “cowboy” that are used in association with clothing:
KID COWBOY (Reg. No. 4956489) for Shirts; T-shirts in Class 025;
COWBOY GANG (Reg. No. 4652283) for Clothing, namely, shirts in Class 025;
OCEAN COWBOY (Reg. No. 4369762) for Baseball caps and hats; hats; shirts; sweat shirts; sweaters; T-shirts; tank-tops; tops in Class 025;
COWBOY GIRL (Reg. No. 3370661) for clothing, namely, tee-shirts, sweatshirts, sweatpants, pants, hats, jackets, and shirts in Class 025;
ALABAMA COWBOY (Reg. No. 3238817) (currently cancelled, but it was registered) for Clothing, namely, hats and t-shirts in Class 025; and
AFRICAN COWBOY (Reg. No. 3761099) for Belts; Jeans; Shirts; Shoes; Shorts; Skirts; T-shirts in Class 025.
So it’s not as if the Dallas Cowboys OWN the word “cowboy”. But where there is confusion – or a likelihood of confusion – between two trademarks, then there can be a problem.
Why is this important?
Make sure that you choose a logo that it is not identical or extremely similar to a preexisting logo. With so many creative artists in the world, why choose a logo that already exists? And don’t assume that you’re in the clear just because your trademark isn’t identical to someone else’s. Identicalness isn’t the test – likelihood of confusion is.