National Football League v. the Night Run, Inc., Opposition No. 91222783

On July 13, 2015, the National Football League (“NFL”) filed a Notice of Opposition before the Trademark Trial and Appeal Board against The Night Run, Inc., seeking to bar registration of the mark SUPERB OWL based on the NFL’s mark SUPER BOWL. The Night Run’s pending trademark application for the mark SUPERB OWL covers “organizing, arranging, and conducting running events”. The Night Run offers 5K and 8K running events where the participants are awarded with a medal inscribed “Superb Owl” and some very enthusiastic runners even dress up as owls. In its opposition, the NFL claims the mark SUPERB OWL confuses consumers, creates a false connection with the NFL and trades on its famous mark, SUPER BOWL.

Like so many other organizations in the public spotlight, the NFL should balance the protection of its rights with public perception. While at first glance it may seem silly or even like trademark bullying for the NFL to bring such an action, upon closer look this may not be the case. In determining whether there is a likelihood of confusion the Board will weigh the thirteen du Pont factors including the sight, sound and meaning of the marks as well as the commercial impressions created. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). The Board will further weigh the use of the marks in the context of the relevant goods and services. Id. While running events typically differ from football events and related merchandising, The Night Run does adopt a football theme for this particular charity run as stated in the opposition by the NFL.

Superb Owl Screenshot

Furthermore, the NFL’s false connection and dilution claims may offer insight into the coverage of the famous mark should the case proceed to judgment. A false connection claim is somewhat unique in trademark law because it seeks to protect the relevant person or institution instead of the public and dilution does not require a likelihood of confusion, but rather offers extra protection against the weakening of a famous mark.

On August 21, 2015, The Night Run filed its answer in response to the Notice of Opposition. The Night Run denied the NFL’s claims and asserted the affirmative defenses of: 1) failure to state a claim for which relief can be granted, 2) laches, and 3) acquiescence.
This is an interesting case to follow; however, the discovery period has been extended and the parties are currently engaged in settlement discussions.