While a federal trademark registration is required to initiate a trademark infringement action in federal court, that is not the only enforcement mechanism for fighting a mark that you believe to be threatening your own. In fact, there is another method of frustrating an applicant who is in the midst of trying to register its mark. It is called a Notice of Opposition.
Before a trademark is registered by the U.S. Patent and Trademark Office, it must first pass through a Notice of Publication period. This is a span of time near the end of the application process that is intended to allow any third parties to chime in with their concerns and potentially prevent a trademark application from becoming registered.
An interesting new example comes by way of a filing by Pizza Hut. In its recent opposition against sports consulting company Genesco Sports Enterprises, Inc., Pizza Hut takes issue with Genesco trying to register the mark, “OFFICIAL PIZZA OF FOOTBALL.”
While Pizza Hut does not own that particular trademark registration, and does not cite to ownership of any of its registered trademarks in its opposition, Pizza Hut uses examples of why the application should be denied on the basis of possible confusion. Pizza Hut cites to its use of “Official Pizza Sponsor of the NFL” by way of its sponsorship of the National Football League, its designation as “Official Pizza Partner” of the NCAA and its partnership with ESPN that makes it the “Official Pizza Sponsor of ESPN College Gameday.”
“Applicant’s use of the phrase “official pizza of football” misrepresents Applicant’s sponsorship status and therefore would materially affect a consumer’s decision to purchase Applicant’s goods,” states the Opposition. “A consumer would incorrectly interpret this phrase to designate that Applicant’s goods are endorsed, sponsored, or licensed by, or otherwise affiliated with, the NFL, the NCAA, or other football properties. As such, the applied-for mark is deceptive.”
There is obviously more to this dispute than what first meets the eye. Genesco has been a marketer for Papa John’s and Pizza Hut may be concerned that if Genesco receives a registration it would be able to license it to Pizza Hut’s competitors and ambush Pizza Hut after it has spent a lot of money for official category sponsorships.