Philadelphia Eagles forgot one key trademark – and it cost them

The National Football League (NFL) is the highest level of professional American football in the United States.

One of the most well-known teams in this league is the Philadelphia Eagles, founded in 1933 and a longstanding part of the city’s sports culture. Their fan base is considered one of the most passionate in the American sports landscape.

NFL Properties Europe (NFLP), the company managing the trademark rights of NFL teams, recently encountered the trademark application shown below:

NFLP couldn’t ignore it: the application bears a suspiciously strong resemblance to the Philadelphia Eagles’ logo, which also features a stylized black-and-white eagle head.

Surprisingly, however, the team has only registered two word marks: ‘EAGLES’ and ‘PHILADELPHIA EAGLES’. This raises the question: can you effectively oppose a pure figurative mark using only word mark registrations?

The opposition was filed on the basis of likelihood of confusion between the figurative mark and the two existing word marks. Visually, however, the signs share no common elements. The earlier marks consist exclusively of text, while the contested sign is a purely figurative mark without any verbal component. As the figurative mark contains only visual elements, an aural comparison was not relevant. Philadelphia Eagles hoped that conceptual similarity — since all the marks refer to an eagle — would be sufficient to establish a likelihood of confusion. Unfortunately, the EUIPO did not agree, reasoning that the logo could just as easily be perceived by consumers as representing a different bird.

When claiming likelihood of confusion, the existence of similarity between the signs is a necessary condition. Since there was no such similarity in this case, NFLP’s opposition was dismissed: no likelihood of confusion exists.

NFLP also argued that use of the contested sign would result in unfair advantage being taken of, or detriment caused to, the reputation of its earlier marks. This argument also failed: without similarity between the earlier marks and the applied-for mark, this ground cannot succeed either. The opposition was therefore fully rejected.

Although the team’s logo is undeniably well-known, that in itself did not provide a sufficient basis for a successful opposition. In short: don’t just register your word marks, but also your logos. Even a globally recognized brand like the Philadelphia Eagles can be legally vulnerable when the visual core of its brand—the logo—is missing from its trademark portfolio.

Can the Chinese applicant now freely use the mark in Europe? That seems unlikely. Once the mark is actually registered, a cancellation action on the grounds of bad faith remains a potential risk.

Author: Erwin Haüer

Bio: Erwin is a trademark attorney and, as the managing partner, in charge of IT and Information Management. He works extensively with startups and scale-ups, while his clientele also includes numerous multinational corporations. Erwin possesses a sharp wit and a keen eye for remarkable trademark news and curious brand infringements.